WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BJ Acquisition, LLC v. Fundacion Private Whois
Case No. D2012-0755
1. The Parties
The Complainant is BJ Acquisition, LLC of Long Island City, New York, United States of America, represented by Tucker & Latifi, LLP, United States.
The Respondent is Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <betseyjohnson-outlet.com> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2012. On April 12, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On April 13, 2012, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 April 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 11, 2012. 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.
4. Factual Background
The Complainant is the owner of the BETSEY JOHNSON trademarks, used for fashion-forward clothing and accessories for women. The Complainant’s trademark rights in the BETSEY JOHNSON trademarks date back over 30 years, with registrations dating back to 1988. The Complainant has registered its trademark in several jurisdictions, including the United States, Canada, China, the European Union, Hong Kong, Italy, Japan, the Republic of Korea, the Russian Federation, Turkey, Taiwan (Province of China), the United Arab Emirates, and the United Kingdom.
Complainant has 65 licensed BETSEY JOHNSON-named retail stores worldwide and BETSEY JOHNSON branded goods are sold worldwide by the Complainant and its licensees.
The disputed domain name was registered on February 28, 2012.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
The Complainant states that it has been using the BETSEY JOHNSON trademarks for fashion-forward clothing and accessories for women for over 30 years. The Complainant provides a list of trademark registration in several jurisdictions around the world. The Complainant states that the disputed domain name incorporates the Complainant’s trademarks and is confusingly similar to the disputed domain name.
The Complainant asserts that it has not authorized or licensed the Respondent to use its registered trademarks and that the Respondent has no legitimate right to use the Complainant’s trademarks in the disputed domain name. The Complainant also argues that the Respondent is not commonly known by the disputed domain name and that there can be no legitimate business reason for the Respondent to own and/or use the disputed domain name.
The Complainant states that an Internet user entering the disputed domain name and finding the Respondent’s website advertising and selling unauthorized and potentially counterfeit BETSEY JOHNSON-branded jewelry may become discouraged and may cease searching for the Complainant’s own website to the Complainant’s detriment, which is an act of bad faith.
By using the disputed domain name, the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent web site by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent website.
The Respondent’s registration of the disputed domain name that wholly incorporates the Complainant’s trademark with the addition of the descriptive term “outlet” indicates that the Respondent registered the disputed domain name for the sole purpose of creating likelihood of confusion in the minds of the consumer between the disputed domain name and Complainant’s mark. The term “outlet” also suggests that the BETSEY JOHNSON-branded jewelry is possibly sold at discounted price.
The Complainant requests as a remedy the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in BETSEY JOHNSON. The Panel also finds that the domain name <betseyjohnson-outlet.com> is confusingly similar to the Complainant’s trademark. The name “BETSEY JOHNSON” is clearly the dominant element of the disputed domain name. The Panel has had little difficulty in finding that the disputed domain name is confusingly similar to the trademark BETSEY JOHNSON, as the additional elements are, in a trademark sense, generic or common. Here, the addition of the hyphen (“-“) and the word “outlet” to the BETSEY JOHNSON trademark does not cure the disputed domain name of its confusing nature.
For this reason, the Panel concludes that the Complainant has proven that the disputed domain name is identical or confusingly similar to the Complainant’s valid trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the domain name or to use the trademark. The Complainant has prior rights in the trademark, which precede the Respondent's registration of the disputed domain name by several decades. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and has thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
The Complainant's allegations with regard to the Respondent's registration and use of the disputed domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.5, a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name.
The Panel visited the Complainant’s website at “www.betseyjohnson.com” and the website to which the disputed domain name resolves. The Panel was able to verify that the trademark BETSEY JOHNSON appears in the disputed domain name with the same font and style of Complainants website. In addition, the disputed domain name contains a design of what appears to be an online store for jewelry. The text in the “About Us” section of the disputed domain name is a literal copy of the same text available at the Complainant’s main domain name. It is the view of the Panel, that the design of the disputed domain name would lead Internet user to believe that the disputed domain name is somehow related to the Complainant.
Therefore, this case falls squarely with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where: “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 Panel therefore finds that the disputed domain name was registered in bad faith and is being used in bad faith.
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 <betseyjohnson-outlet.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: May 27, 2012