WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jack Rogers Holding Company v. lin jing

Case No. D2021-4162

1. The Parties

The Complainant is Jack Rogers Holding Company, United States of America (“United States”), represented by Olshan Frome Wolosky, LLP Lawfirm, United States.

The Respondent is lin jing, China.

2. The Domain Name and Registrar

The disputed domain name <jackrogersusastore.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 December 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2022.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on January 12, 2022. 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, Jack Rogers Holding Company LLC, is a company incorporated in Delaware, United States of America. It is a retail women's footwear and accessories company.

The Complainant is the owner of two US trademarks containing or comprising JACK ROGERS:

- United States trademark JACK ROGERS with registration no. 3898156, registered on December 28, 2010 and first used since November 2009, in international classes 18 (handbags, clutches, wallets, purses, shoulder bags, tote bags) and 35 (Retail store services in the field of clothing and accessories); and
- United States trademark JACK ROGERS with registration no. 3760628, registered on March 16, 2010 and first used since January 1, 1960, in international class 25 (footwear).

The Complainant owns and operates the online Jack Rogers retail store located at <jackrogersusa.com> since at least 2009.

The disputed domain name <jackrogersusastore.com> was registered on April 15, 2021, well after the Complainant secured rights to the trademarks. The Panel visited the disputed domain name on January 20, 2022 and noticed that it no longer directly resolves to an online store website as shown on images provided by the Complainant in Annex 6 to the Complaint. Instead, it first redirects to the domain name <jackrogersoutlet.com> and this domain name resolves to what appears to be the same online store. The online store’s homepage has the title “Jack Rogers | Every Step of a Well Loved Life – Jack Rogers USA” and features the JACK ROGERS trademark in the left upper corner of all website pages. The products sold in the online store are all described as “Jack Rogers USA” products and include sandals, shoes, and various accessories.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the three elements specified in paragraph 4(a) of the Policy are present. The three elements being: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant contends that the disputed domain name has incorporated the Complainant’s JACK ROGERS trademark in its entirety and that the disputed domain name is similar to the Complainant’s own domain name <jackrogersusa.com>. The Complainant also claims that the Respondent is using the Complainant’s JACK ROGERS trademark throughout its online store that is using the <jackrogersusastore.com> domain name.

Furthermore, the Complainant alleges that the Respondent is using the disputed domain name for an online retail store that purports to be a Jack Rogers store and that it is selling products that are not authentic Jack Rogers products in that online store.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant asserts the Respondent has no rights or legitimate interests in respect of the disputed domain name because there is no evidence that the Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods or services as the Respondent is, according to the Complainant, clearly attempting to pass off its online store as an authentic Jack Rogers store.

The Complainant also contends that there is no evidence that the Respondent has been commonly known as “Jack Rogers” or acquired any trademark or service mark rights in the JACK ROGERS trademark.

Finally, the Complainant claims that the Respondent is not making legitimate noncommercial or fair use of the domain name. Instead, the Complainant states, the Respondent is clearly using the domain name for commercial gain as it misleadingly diverts consumers to its website by passing off the disputed domain name and associated website as a Jack Rogers website.

(c) The disputed domain name was registered and is being used in bad faith

The Complainant alleges that the evidence they have presented shows that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the disputed domain name and associated website, by creating a likelihood of confusion with the Complainant’s JACK ROGERS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Moreover, the Complainant draws attention to the fact that the Respondent acquired the disputed domain name long after the Complainant began using the JACK ROGERS trademark, long after the Complainant obtained trademark registrations for its JACK ROGERS trademark, and long after the Complainant began operating its online retail store at <jackrogersusa.com>.

Finally, as further evidence that the disputed domain name was registered and is being used in bad faith, the Complainant contends that the Respondent is selling products on the website associated with the disputed domain name that are not authentic Jack Rogers products.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel finds that it has jurisdiction to hear this dispute as the Policy has been incorporated by reference into the Registration Agreement between the Registrar and the Respondent.

The Panel notes that while the Respondent has been duly notified, they did not reply to the Complainant’s contentions within the time period established by the Rules. Pursuant to paragraph 14 of the Rules the Panel shall nonetheless proceed to a decision on the Complainant’s Complaint and it may draw such inferences from the Respondent’s failure to respond as it considers appropriate.

Paragraph 4(a) of the Policy requires that in order for its Complaint to succeed, the Complainant must prove that the following three elements are present:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.

The above three elements will each be discussed in further detail below.

A. Identical or Confusingly Similar

The Complainant is required to establish: (1) that it owns rights in a trademark or service mark, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

Firstly, the Panel finds that the Complainant has clearly evidenced that it owns registered trademark rights to JACK ROGERS. The Panel is satisfied with the evidence provided in support of the existence of trademarks comprising the words “Jack Rogers”. It should be noted that paragraph 4(a)(i) of the Policy does not set minimum requirements as to the jurisdiction(s) of the trademarks a complainant relies on, nor as to the number, nature or scope of protection of such trademark(s).

Secondly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks since the disputed domain name incorporates the trademark JACK ROGERS in its entirety. The addition of the words “usa” and “store” does not change this. It is a well-established view of UDRP panels, with which the Panel agrees, that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (see for instance: Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; M/s Daiwik Hotels Pvt. Ltd v. Senthil Kumaran S, Daiwik Resorts, WIPO Case No. D2015-1384; BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284).

Finally, as for the applicable Top Level Domain , i.e. the suffix “.com”, the Panel holds that this can be disregarded under the first element confusing similarity test (CANAL + FRANCE v. Franck Letourneau, WIPO Case No. DTV2010-0012; Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that shall demonstrate a right or legitimate interest:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by a complainant is generally sufficient to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that a respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

The Panel notes that the Respondent has not responded to any of the Complainant’s contentions, let alone submitted evidence to the contrary, and that, pursuant to paragraph 14 of the Rules, the Panel may draw such inferences from the Respondent’s failure to respond as it considers appropriate. In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors.

The Panel agrees with the Complainant that there is no evidence that the Respondent uses the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent, instead, appears to attempt to pass off the online store associated with the disputed domain name as an authentic JACK ROGERS store. The fact that, at the time of the Panel’s visit to the disputed domain name, it no longer hosted an online store, but rather redirected to the domain name <jackrogersoutlet.com> which resolves to what appears to be the same online store, is irrelevant in the Panel’s view. Visitors of the disputed domain name are still provided direct access to the online store which in its appearance does not seem to be any different from the online store previously hosted on the disputed domain name.

The disputed domain name <jackrogersusastore.com> closely resembles the domain name used for the Complainant’s online store <jackrogersusa.com>, and therefore improperly suggests that the online store website it redirects to is the official Jack Rogers online store or, at least, that it is somehow affiliated with the Complainant. Furthermore, the online store website which the disputed domain page redirects to uses the same home page title as the Complainant’s online store: “Jack Rogers | Every Step of a Well Loved Life – Jack Rogers USA” and features the Complainant’s logo, containing its JACK ROGERS trademark, in the left upper corner of all website pages. The products sold in the online store, including sandals, shoes, and various accessories, are all described as “Jack Rogers USA” products. Moreover, the Panel, while inspecting the evidence presented and during its visit to the online store website that the disputed domain name redirects to, was unable to find any disclaimer stating that the online store is not the official Jack Rogers store and is not affiliated with the Complainant.

Finally, the Panel agrees with the Complainant that no evidence has been presented that the Respondent has been commonly known as “Jack Rogers” or acquired any trademark or service mark rights in the JACK ROGERS trademark. There is also no evidence that would suggest the Respondent is making noncommercial or fair use of the domain name.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy non-exhaustively lists four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) 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.”

As for the evidence of bad faith registration of the domain name, the Complainant points to the facts that the Respondent acquired the disputed domain name long after the Complainant’s first use and registration of the JACK ROGERS trademark and long after the Complainant began operating its online retail store at <jackrogersusa.com>. It is a well-established view of UDRP panels, with which the Panel agrees, that bad faith registration may be found where the Respondent knew or should have known of the use and registration of the JACK ROGERS trademark prior to registering the disputed domain name (see for instance Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693). Absent any response from the Respondent and contrary evidence, the Panel finds that the above facts can indeed support a conclusion that the disputed domain name was registered in bad faith. The Complainant’s presence on the Internet makes it unlikely that the Respondent was unaware that the registration of the disputed domain name would violate the Complainant’s rights. This conclusion is enhanced by the fact that the Respondent has chosen to offer what look like the Complainant’s products on the online store website to which the disputed domain name is redirected.

As for the use of the disputed domain name, the Complaint appears to rely on the circumstances described under paragraph 4(b)(iv) of the Policy and contends that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s JACK ROGERS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Panel finds that the facts discussed in detail under section B above can indeed support the conclusion that the Respondent appears to attempt to pass off the online store associated with the disputed domain name as an authentic JACK ROGERS store. Such use, which at its heart relies on exploiting user confusion, cannot constitute bona fide use as it may confuse the public about the business origin, the quality of products or services, and about the owner of the disputed domain name. Absent any response from the Respondent and contrary evidence, the Panel finds this is sufficient evidence that the disputed domain name is being used in bad faith. In making this decision, the Panel has not taken into account the Complainant’s contention that the Respondent is selling counterfeit Jack Rogers products, since no evidence has been presented in support of this claim.

The Panel finds that the circumstances and evidence presented by the Complainant offer sufficient proof that both the Respondent’s registration and current use of the disputed domain name are in bad faith.

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, <jackrogersusastore.com>, be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: January 27, 2022