WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BJ Acquisition, LLC v. Xiangrong Shi

Case No. D2014-1515

1. The Parties

Complainant is BJ Acquisition, LLC of Long Island City, New York, United States of America (“United States”), represented by Tucker & Latifi, LLP, United States.

Respondent is Xiangrong Shi of Tianjin, China.

2. The Domain Name and Registrar

The disputed domain name <betseyjohnsonjpkutu.com> is registered with GoDaddy.com, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2014. On September 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 5, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 7, 2014.

The Center appointed Francine Tan as the sole panelist in this matter on October 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.

4. Factual Background

Complainant asserts that it is the worldwide owner of the BETSEY JOHNSON trade mark and other trade marks incorporating the words “Betsey Johnson” (“the BETSEY JOHNSON trade marks”) in connection with “fashion forward” clothing and accessories for women. The trade mark rights in the BETSEY JOHNSON marks owned by Complainant and its predecessors in interest date back over 30 years. Complainant is the owner of numerous trade mark registrations in the United States and other countries across the world (including China, Canada, the European Union, Japan, Korea and Malaysia).

The designer Betsey Johnson has designed and sold “fashion forward” women’s clothing for over 30 years. In 1999, she received the prestigious “Timeless Talent Award” from the Council of Fashion Designers of America (CFDA) for her influence on fashion. There are 65 Betsey Johnson retail stores worldwide. In 2002, Complainant began to also design, source, market, and sell fashion handbags and lingerie. In 2003, BETSEY JOHNSON-branded footwear, belts, eyewear, watches, swimwear, leg wear, outerwear and fragrance began being marketed.

The disputed domain name was registered on June 9, 2014.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name is confusing similar to a trade mark in which it has rights and that Respondent has no rights or legitimate interests in respect of the disputed domain name. On the latter point, it submits that:

(i) Complainant has not authorized or licensed Respondent to use its registered trade marks and Respondent has no legitimate right to use the BETSEY JOHNSON trade marks;

(ii) Respondent is not commonly known by the disputed domain name and there can be no legitimate business reason for Respondent to own and/or use the disputed domain name; and

(iii) there can be no legitimate business reason for Respondent’s use of the BETSEY JOHNSON trade marks in connection with the disputed domain name.

Lastly, Complainant asserts that the disputed domain name was registered and is being used in bad faith. In this regard, it submits as follows:

(i) By using the disputed domain name, Respondent is intentionally attempting to attract for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s BETSEY JOHNSON trade mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the goods being offered on Respondent’s web site. Thus, Complainant believes the disputed domain name has been registered and is being used in bad faith, and creates a likelihood of confusion in the market place.

(ii) An Internet user entering the disputed domain name as a URL and finding Respondent’s web site advertising and selling unauthorized and potentially counterfeitBETSEY JOHNSON-branded handbags may become discouraged and may cease searching for Complainant’s own web site, to Complainant’s detriment.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

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

(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has satisfied the first element of paragraph 4(a)(i) of the Policy, in establishing it has rights to the trade mark BETSEY JOHNSON. As to whether the additional letters “jpkutu” in the disputed domain name serve to remove the confusing similarity with Complainant’s trade mark BETSEY JOHNSON, the Panel is of the view that it does not. The trade mark BETSEY JOHNSON has been incorporated in its entirety in the disputed domain name and is clearly identifiable therein. The trade mark BETSEY JOHNSON forms the first and predominating element in the disputed domain name. The element “jpkutu” in the disputed domain name appears to be a mere arbitrary combination of letters which do not remove the confusing similarity with Complainant’s trade mark. This position is consistent with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Panel therefore concludes that paragraph 4(a)(i) of the Policy has been satisfied by Complainant.

B. Rights or Legitimate Interests

The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. The well-established practice as reflected in paragraph 2.1 of the WIPO Overview 2.0 is that a complainant is only required to make out a prima facie case in regard to paragraph 4(a)(ii) of the Policy. Once this requirement has been met, the burden of production shifts to the respondent to demonstrate, with evidence, its rights or legitimate interests in respect of the domain name.

Respondent failed to respond or to dispute the assertion made by Complainant in regard to this issue. What has been presented to the Panel is evidence which reflects (i) that Complainant’s trade mark BETSEY JOHNSON has been in use for many years and registered in many countries; (ii) that Complainant did not authorize or licence Respondent to use the BETSEY JOHNSON trade mark, or to register a domain name incorporating the said trade mark; (iii) that there is no evidence of Respondent being commonly known by the name “Betsey Johnson”; and (iv) there is no apparent reason why Respondent chose to register the disputed domain name incorporating a trade mark of Complainant other than for the purpose of capitalizing on the fame of Complainant and/or of its trade mark, BETSEY JOHNSON.

In the circumstances, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied by Complainant.

C. Registered and Used in Bad Faith

Based on the evidence submitted regarding Respondent’s use of the disputed domain name, the Panel is persuaded that Respondent was aware of Complainant’s trade mark when it registered the disputed domain name. On Complainant’s web site “www.betseyjohnson.com”, the BETSEY JOHNSON trade mark, presented in a highly stylized font in pink, appears prominently. An extract copy of this representation of Complainant’s trade mark can be found on Respondent’s web site. Respondent’s web site offers for sale BETSEY JOHNSON handbags at discounted prices. Whether the goods sold are genuine is undetermined. Nevertheless, what is of relevance to the issue at hand is whether registration and use of the disputed domain name have been in bad faith. The Panel finds in the affirmative. On the available record, the Panel agrees with Complainant, that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s BETSEY JOHNSON trade mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the goods being offered on Respondent’s web site.

The Panel therefore finds that the paragraph 4(a)(iii) of the Policy has been satisfied.

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 <betseyjohnsonjpkutu.com> be transferred to Complainant.

Francine Tan
Sole Panelist
Date: October 20, 2014