The Complainant is J Brand, Inc. of New York, New York, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
The Respondent is Guanjing, Daziran of Tianjin, China.
The disputed domain name <jbrandjeanssale.net> (the “Disputed Domain Name”) is registered with eName Technology Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2014. On July 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 23, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 4, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On August 4, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2014.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 17, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is in the business of designing, manufacturing and retailing apparel products under the trademark J BRAND. The Complainant has been using the trademark J BRAND on apparel products which are distributed throughout the world since 2004.
The Complainant owns trademark registrations for the trademark J BRAND in various countries, including the following:
Jurisdiction | Trademark No. | Registration Date |
|
United States |
3250947 |
June 27, 2007 |
|
Canada |
TMA736886 |
March 25, 2009 |
|
Community trademark |
4994885 |
April 11, 2007 |
|
China |
5420633 |
July 7, 2013 |
|
Hong Kong |
300659412 |
June 15, 2006 |
The Complainant operates a website at “www.jbrandjeans.com”. The website displays the words J BRAND prominently at the top left corner and incorporates photographs of models in various poses adorned with apparel associated with the trademark J BRAND.
Little is known about the Respondent beyond that found in the WhoIs record of the Disputed Domain Name. The WhoIs record indicates that the Respondent registered the Disputed Domain Name on April 11, 2014. At some point in time before the Complaint, the Disputed Domain Name resolved to a website which displayed the words J BRAND prominently at the top left corner. The website also incorporated photographs of models in apparel associated with the trademark J BRAND and featured shopping cart facilities on the face of the webpages.
On June 27, 2014, the Complainant sent a cease and desist letter to the Respondent via email to the Respondent’s contact email address as reflected in the WhoIs record. The Complainant did not receive a reply to the cease and desist letter.
The Complainant contends that:
a) The Disputed Domain Name is confusingly similar to the trademark J BRAND. The addition of the generic or descriptive phrase “Jeans Sale” in the Disputed Domain Name neither excludes the likelihood of confusion with the trademark J BRAND nor detracts from the dominant part of the Disputed Domain Name, namely the trademark J BRAND;
b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not made use of the Disputed Domain Name for any bona fide offering of goods or services. The Respondent has no agreement with the Complainant authorizing the use of the trademark J BRAND. The Respondent is not personally identified or commonly known by the trademark J BRAND. The Respondent neither owns any trademark registration for the mark J BRAND nor applied to register such trademark; and
c) The Disputed Domain Name was registered and is being used in bad faith. The Respondent registered the Disputed Domain Name with full knowledge of the famous trademark J BRAND. It is not plausible for the Respondent to have coincidentally registered the Disputed Domain Name. The Respondent used the website resolved from the Disputed Domain Name to intentionally misdirect and attract for commercial gain Internet users by creating a likelihood of confusion with the trademark J BRAND as to the source, sponsorship, affiliation or endorsement of the website and of products and services on the website. The website features images copied from the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions.
The registration agreement relating to the Disputed Domain Name is in Chinese. Accordingly, the default language of the proceeding is Chinese. A panel is entitled to adopt a different language of proceeding pursuant to paragraph 11(a) of the Rules having regard to the circumstances.
The Complainant has requested that English be adopted as the language of proceeding. Having reviewed the evidence, the Panel grants the Complainant’s request on account of the following circumstances:
a) The Complaint was submitted in English and the Complainant has expressed reservations about bearing the burden and cost of translating the Complaint to Chinese;
b) The website resolved from the Disputed Domain Name was entirely in English;
c) The Respondent has not submitted a response and chosen not to participate in the proceeding;
d) The Respondent has neither commented nor objected to the Complainant’s request for English to be adopted as the language of proceeding; and
e) There is no foreseeable benefit to the proceeding to be gained by insisting on Chinese being used as the language of proceeding. On the contrary, doing so will lead to unnecessary delay to the proceeding.
In order to succeed in this proceeding, the Complainant must establish the following elements of paragraph 4 of the Policy on the evidence submitted:
a) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
c) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has shown that it owns registrations for the trademark J BRAND in various jurisdictions, the oldest of which dated back to April 2007. In view of these registrations, the Complainant clearly has rights in the trademark J BRAND. The Disputed Domain Name incorporates the trademark J BRAND entirely and differs only in the addition of the ensuing words “jeans sale”. It is the consensus of past panels that the addition of merely generic or descriptive words to a domain name entirely incorporating a trademark does not distinguish the domain name from the trademark.
There is nothing unusual in the present circumstances to depart of the consensus view of past panels in this respect. The Panel is of the view that the addition of “jeans sale” in the Disputed Domain Name does not assist to distinguish it from the trademark J BRAND. Therefore, the Panel holds the Disputed Domain Name to be confusingly similar to the Complainant’s trademark J BRAND.
The Complainant has confirmed that it does not have any agreement with the Respondent authorizing the Respondent to use of the trademark J BRAND. There is also no evidence to suggest that the Respondent is identified or commonly known by the trademark J BRAND. The website resolved from the Disputed Domain Name does not appear to be a legitimate noncommercial use of the Disputed Domain Name to the Panel. In the circumstances, the Panel accepts that the Complainant has shown a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. In the absence of a Response, the Respondent has not rebutted the prima facie case and the second limb of paragraph 4(a) of the Policy is accordingly established.
The trademark J BRAND has been used by the Complainant since 2004. The Disputed Domain Name was only registered earlier this year. Having reviewed the printouts of the website resolved from the Disputed Domain Name, the Panel finds it inconceivable for the Respondent to be unaware of the trademark J BRAND. The use of the words “J Brand” as a prominent banner element on the website, and the adoption of images of models in a manner which uncannily resembles the design of the Complainant’s website, leaves a strong impression that the Respondent must have registered the Disputed Domain Name to capitalize on the trademark J BRAND.
The circumstances concur with the example of bad faith registration and use outlined in paragraph 4(b)(iv) of the Policy, which states:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The offer of products and shopping cart facilities on the website resolved from the Disputed Domain Name indicates that the website must have commercial gain as a goal, rather than accident. The Respondent is clearly using the Disputed Domain Name to attract Internet users by creating a likelihood of confusion with the trademark J BRAND as to the source, sponsorship, affiliation or endorsement of the website resolved from the Disputed Domain Name and the products thereon. The Panel is convinced that the present case is one which falls squarely within the example of bad faith registration and use as outlined in paragraph 4(b)(iv) of the Policy. The third limb of paragraph 4(a) is therefore established on the facts.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <jbrandjeanssale.net> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: October 13, 2014