WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jane, LLC v. Danny Nguyen (Nguyen Dac Tuan), VictoryBra

Case No. D2021-1186

1. The Parties

The Complainant is Jane, LLC, United States of America (“United States”), represented by Dorsey & Whitney, LLP, United States.

The Respondent is Danny Nguyen (Nguyen Dac Tuan), VictoryBra, Viet Nam, self-represented.

2. The Domain Name and Registrar

The disputed domain name <janedeal.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2021. On April 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2021, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. On May 5, 2021, the Respondent contacted the Center requesting an extension to the Response due date. Pursuant to paragraph 5(b) of the Rules, on May 5, 2021, the Center informed the Parties that the Response due date was automatically extended until May 15, 2021. The Response was filed with the Center on May 14, 2021. The Annexes to the Response were received on May 19, 2021.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 27, 2021. 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 operates an online retail store and provides marketing services. It began operations in 2011 from a website to which the domain name <jane.com> resolves.

According to the Complaint, the Complainant services some 3,000 fashion boutique and name brand merchants. To attract repeat visits to its marketplace, its method is to “drop” a slate of 600 or so new products at 2:00am each morning (United States East Coast time) at special discounted prices. The products are available at the discounted products only for a limited time or until sold out. A new offer is made each day. The products are essentially clothing and fashion accessories.

According to the declaration of Tracey Downey, the Complainant’s Compliance Manager, included as an annexure to the Complaint, the Complainant’s business method attracts more than five million unique visitors to its website at the domain name <jane.com> or through its mobile app each month. The Complainant’s mobile app has been downloaded 3.3 million times. It has achieved a 4.9 rating out of 5 in Apple’s App Store from more than 250,000 reviews. The Complainant also has more than one million Facebook followers and three million weekly users of its Instagram account. Amongst other things, the Complainant is a six-time “honoree” by Inc. 5000. It emails out promotional messages to more than two million subscribers several times each week.

Its revenues have grown year on year since its establishment. Its aggregate revenues from merchandise sales since its founding exceed USD 1 billion. According to the Complaint, its projected revenue for 2021 is over USD 300 million. Its yearly marketing budget exceeds “tens of millions of [US] dollars”.

Amongst other things, the Complainant owns two registered trademarks in the United States:

(a) Registered Trademark No. 4,971,505, JANE, in respect of online retail stores and services in International Class 35, which was filed on January 25, 2015, and registered on June 7, 2016; and,

(b) Registered Trademark No.4,986,398, JANE.COM, also in respect of online retail stores and services in International Class 35, which was filed on March 20, 2015, and registered on June 28, 2016.

The Complainant states that both trademarks have been in use continuously in the United States since 2013.

It appears the Respondent registered the disputed domain name on July 2, 2020. The website it resolves to offers for sale a range of boutique fashion merchandise, including clothing and fashion accessories. According to the Response, the unique selling point of the Respondent’s products is that they all bear a printed image which are apparently produced through a Print on Demand process.

According to the Response, the Respondent has had great commercial success in its one year of operations including more than 30,000 customers in the United States, making it one of the fastest growing clothing stores.

Although neither party mentions it, it appears that there is an account in the name of Victory Bra on Facebook. This account appears to have been created on April 21, 2020. It offers for sale a product known as the “Victory Bra”. It is not clear if the operator of this account is the Respondent.

The Complaint and Response both include print outs of the website to which the disputed domain name resolved to. At the time this decision is being prepared, however, the website states it is opening soon. It says further:
“Thank you for visiting our website. We rebrand our website to avadeal.com. Please visit https://avadeal.com/ for our latest deal and promotions! For order inquiries, please contact us at [...]@janedeal.com or text us at +1302xxxxxxxx.

“Be the first to know when we launch”

Then follows a box to enter an email address to receive promotions, new products and sales “Directly to your inbox.” There is also a button to “Enter Using Password”.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(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.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of at least the two registered trademarks, JANE and JANE.COM, referred to in section 4 above.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.

In undertaking that comparison with respect to the trademark JANE, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.

Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark JANE and the term “deal”. As this requirement under the Policy is essentially a standing requirement, the addition of such a descriptive term does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark JANE remains visually and aurally recognisable within the disputed domain name.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar at least to the Complainant’s trademark JANE and the requirement under the first limb of the Policy is satisfied. Accordingly, it is strictly unnecessary to make any finding about JANE.COM.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a 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 [the Respondent] has 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.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.

The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived.

These matters are not disputed by the Respondent. Bearing in mind that the Complainant started using its trademark JANE at least seven years before the Respondent commenced operations and has been using and promoting its trademark on a very substantial scale, the Panel finds the Complainant has made out the required prima facie case.

The Respondent contends that there is no risk of confusion because its trade name, trademark, trade dress, market channel, and product offering are “completely different” from the Complainant’s. The Respondent also denies knowledge of the Complainant’s trademark and says it should not be attributed with constructive knowledge as it is in a different country to the Complainant.

The Panel does not accept that “Jane Deal” or <janedeal.com> are so different to the Complainant’s trademark JANE, or for that matter JANE.COM, that there would be no risk of confusion. On the contrary, as held in section 4 above, the disputed domain name is confusingly similar at least to the Complainant’s JANE trademark.

Assuming in the Respondent’s favour that its product offering of garments printed on demand with images is unique, nonetheless the Respondent’s product offering is still in direct competition with the products being offered through the Complainant’s market place. The Respondent’s online retail store (which at the least was being carried on from the disputed domain name) is providing services directly in competition with the Complainant’s market place. By the Respondent’s own admission, it does so by serving customers in the Complainant’s domestic United States market.

Such an offering does not qualify as a good faith offering of goods under the Policy.

Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

As noted above, the Respondent denies knowledge of the Complainant or its trademarks before adopting the disputed domain name.

The Panel finds it very difficult to accept that denial in the circumstances of this case.

First, as noted above, it appears that the Complainant had developed a very substantial reputation in its name and trademarks well before the Respondent registered the disputed domain name.

It is true that the Complainant’s business appears to be based essentially in the United States and the Respondent gives an address in Viet Nam. As the Complainant points out, however, the website to which the disputed domain name resolved before notification of the dispute stated on the “About Us” page that:

“Janedeal is an international e-commerce website registered in California where our office is located.”

In addition, by the Respondent’s own admission, the Respondent has (or claims to have) over 30,000 customers in the United States.

Further, as the Complainant also points out, it has previously engaged in litigation successfully against a business operating as “Jane Closet” from a website at <janecloset.com>. Apart from the name “Jane Closet” and the actual contact details, the text, layout and format of the About Us web page at <janecloset.com> was virtually identical, if not identical, to the About Us page at the Respondent’s website. This included the statement:

“Jane Closet is an international e-commerce website registered in California where our office is located.” (Emphasis supplied) (The difference in contact details is that the Jane Closet website actually set out a physical and telephonic address.)

What is more, the Complainant points to a number of other websites which, apart from the name, have identical About Us web pages: “avacloset.com”, “jennstore.com”, and “avadeal.com” to the disputed domain name’s website.

It will be recalled that “www.avadeal.com” is the website to which it appears the Respondent’s website at the disputed domain name is transferring.

The Respondent points out that “Jane” is a very common girl’s name. That does not explain how the Respondent picked it out of all the possible names it could have adopted. The Respondent certainly has not advanced any explanation or justification for that.

In these circumstances, the Panel is not prepared to accept the Respondent’s denial of knowledge of the Complainant and its trademarks. The Respondent appears to be conducting what it claims to be a very substantial business in the very market the Complainant has developed its very substantial reputation. A substantial reputation which was developed long before the Respondent entered the field.

It would appear highly unlikely that the Respondent was not aware of the Complainant and its trademark. At the very least, it was incumbent on the Respondent to take the elementary precaution of a trademark search before it adopted the name “Jane Deal” for what it obviously intended would be, or would develop into, a substantial business. See e.g . WIPO Overview 3.0, section 3.2.3.

To the extent that the Respondent is behind or involved with the other “Jane”, “Ava”, and “Jenn” websites, that only reinforces the need for appropriate due diligence to be able to claim to be acting in accord with honest commercial practices. Also see e.g. WIPO Overview 3.0, section 3.2.3.

Moreover, the way the Respondent is using the disputed domain name to provide online retail services and fashion garments and accessories in direct competition with the Complainant’s services and the products offered through the Complainant’s services does not constitute use in good faith under the Policy. Quite the contrary.

In these circumstances, therefore the Panel finds the Respondent has registered and used it in bad faith.

Accordingly, the Complainant has established all three requirements under the Policy.

7. Decision

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 <janedeal.com> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: June 10, 2021