WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Juicy Couture, Inc. v. Wichell / Ho Alex

Case No. D2012-1675

1. The Parties

Complainant is Juicy Couture, Inc. of Pacoima, California, United States of America, represented by Davis Wright Tremaine LLP, United States of America.

Respondent is Wichell / Ho Alex of Guang Zhou, Guang Dong, China.

2. The Domain Name and Registrar

The disputed domain names <juicycoutureoutletbest.com>, <juicycoutureoutletbuy.com>, <outletjuicycoutureshop.com>, <outletsjuicycoutures.com> are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”)

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2012. On August 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 22, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on August 29, 2012. On August 22, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On August 24, 2012, Complainant confirmed its request that English be the language of proceeding. Respondent did not comment on the language of proceedings by the specified due date.

The Center verified that the Complaint together with the amended 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 August 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 20, 2012.

The Center appointed Yijun Tian as the sole panelist in this matter on October 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.

It has been necessary to this Panel to extend the period for issuing a decision in this case to the date indicated under paragraph 7.

4. Factual Background

Complainant, Juicy Couture, Inc. is a company incorporated in Pacoima, California, United States. It is well-known for the line of clothing and accessories it designs, manufactures, and distributes.

Complainant has exclusive rights in several JUICY and JUICY COUTURE trademarks (hereafter “JUICY Marks”). Complainant is the exclusive owner of registered JUICY mark since 1999 and JUICY COUTURE mark since 2000 in the United States (See Exhibit C to the Complaint). Complainant operates an extensive website featuring information about its goods and activities throughout the world at “www.juicycouture.com”.

Respondent is Wichell / Ho Alex of Guang Zhou, Guang Dong, China. The disputed domain names <juicycoutureoutletbest.com>, <juicycoutureoutletbuy.com>, <outletjuicycoutureshop.com> and <outletsjuicycoutures.com> were registered on September 12, 2011, October 21, 2011, May 27, 2012 and November 10, 2011 respectively, long after the registration of the first of the JUICY Marks (Exhibit C to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) Respondent’s disputed domain names are identical or confusingly similar to Complainant’s JUICY Marks

Complainant’s United States trademark registrations are prima facie evidence of the validity of the JUICY Marks, which creates a rebuttable presumption that Complainant’s Marks are inherently distinctive.

The disputed domain names incorporate a portion of the JUICY Marks with the addition of generic terms and a generic top-level domain (“gTLD”) “.com.”

The addition of descriptive terms to a trademark to form a domain name is not sufficient to avoid a likelihood of confusion with the trademark.

The generic terms used in the disputed domain names not only fail to avoid a likelihood of confusion; they actually increase it because they directly relate to goods sold under the JUICY Marks and the manner of sale of those goods.

It is precisely because of this association by consumers with Complainant’s JUICY Marks that Respondent sought to register the disputed domain names.

The addition of the gTLD “.com” is irrelevant in determining whether the disputed domain names are confusingly similar to Complainant’s JUICY Marks.

(b) Respondent lacks any rights or legitimate interests in the disputed domain names

Respondent cannot demonstrate any rights or legitimate interests in the disputed domain names. Respondent registered the disputed domain names only after Complainant had established rights in Complainant’s Marks.

Registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name, but rather constitutes bad faith under paragraph 4(b) of the Policy.

Complainant’s Marks and name are so well-known and so widely recognized. There can be no legitimate use by Respondent.

Respondent had knowledge of Complainant’s JUICY Marks when it registered the disputed domain names, and Respondent’s choice in registering the disputed domain names “cannot be explained but as a misappropriation of the Complainant’s trademarks.”

Respondent is generating revenue by using the trademark value in Complainant’s JUICY Marks in the disputed domain names; misleading consumers into believing Respondent’s websites and the content therein are affiliated with or endorsed by Complainant.

There exists no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain names that incorporate Complainant’s JUICY Marks.

Respondent is not commonly known by the disputed domain names and is not making a legitimate noncommercial or fair use of the disputed domain names.

c) Respondent registered and is using the disputed domain names in bad faith.

Previous UDRP panels have held that the registration of a domain name “obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith.”

Respondent’s use of a portion of the JUICY Marks in the disputed domain names and throughout its websites to sell counterfeit imitations of Complainant’s products shows that Respondent is using the disputed domain names in bad faith.

Even taken alone, the websites’ “offer[ing] for sale unauthorized and/or counterfeit goods” under Complainant’s Marks is “strong evidence of bad faith.”

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) The disputed domain names were registered and used to sell counterfeit apparel bearing Complainant’s marks. All text on these websites is in English and all its business is conducted using English. (Exhibit D to the Complaint)

(b) The websites contain absolutely no Chinese text, Chinese contact information, or reference to China whatsoever. The holders of the disputed domain names registered and have used the disputed domain names to target an exclusively English-speaking market. It appears that the websites’ operators are quite adept in the English language.

(c) Complainant is an American corporation conducting its business principally in English. Its intellectual property counsel is an American law firm, practicing law principally in English. Conducting this proceeding in Chinese would be highly inconvenient and expensive for Complainant and its counsel.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.3 further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the fact that Complainant is a company from the United States, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the disputed domain names include English words “juicy”, “couture”, “outlet”, “best”, “buy” and “shop”. (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain names <juicycoutureoutletbest.com>, <juicycoutureoutletbuy.com>, <outletjuicycoutureshop.com> and <outletsjuicycoutures.com> are registered in Latin characters and particularly in English language, rather than Chinese script; (b) the websites at the disputed domain names <outletjuicycoutureshop.com> and <outletsjuicycoutures.com> are English-based websites and Respondent is apparently doing business in English through this website (Exhibit D to the Complaint); (c) the Websites appear to have been directed to users in worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:

(i) the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

(iii) the disputed domain names have been registered and are being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the JUICY and JUICY COUTURE Marks acquired through registration. The JUICY Marks have been registered in the United States since 1999 (See Exhibit C to the Complaint), and Complainant is world famous for the line of clothing and accessories it designs, manufactures, and distributes.

The disputed domain names <juicycoutureoutletbest.com>, <juicycoutureoutletbuy.com>, <outletjuicycoutureshop.com> and <outletsjuicycoutures.com> all comprises the JUICY COUTURE Mark in its entirety. The disputed domain names only differ from Complainant’s trademark by the addition (in all cases) of the words “outlets” and, in the other case, “best”, “buy”, “shop”, and “s” to the mark JUICY COUTURE. This does not seem to eliminate the identity or confusing similarity between Complainant’s registered trademark and the disputed domain names.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

The mere addition of the descriptive terms of “outlet”, “best”, “buy”, “shop”, and “s” as prefixes and/or suffixes to Complainant’s mark fails to distinguish to this Panel the disputed domain names from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. One of common meanings of the term “outlet” is a store that sells the goods of a particular manufacturer or wholesaler. Internet users who visit disputed domain names are likely to be confused and may falsely believe that they are online shops operated by Complainant for selling JUICY COUTURE-branded products. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the JUICY COUTURE Marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:

(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain names; or

(iii) legitimate noncommercial or fair use of the disputed domain names.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has exclusive rights in several JUICY Marks, such as the registration of JUICY mark (since 1999) and the registration of JUICY COUTURE mark (since 2000) in the United States (see Exhibit C to the Complaint). Complainant also operates an extensive website featuring information about its goods and activities throughout the world at “www.juicycouture.com”. Complainant submitted that “[d]ue to the extensive use and registration of JUICY Marks around the world, the JUICY Marks have become famous under the laws of the United States”.

Moreover, Respondent is not an authorized dealer of JUICY branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word “juicy couture” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the JUICY COUTURE Mark or to apply for or use any domain names incorporating the JUICY COUTURE Mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. The disputed domain names <juicycoutureoutletbest.com>, <juicycoutureoutletbuy.com>, <outletjuicycoutureshop.com> and <outletsjuicycoutures.com> were registered on September 12, 2011, October 21, 2011, May 27, 2012 and November 10, 2011 respectively, long after the registration of the first of the JUICY Marks (Exhibit A to the Complaint). The disputed domain names are identical or confusingly similar to Complainant’s JUICY COUTURE Mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported JUICY COUTURE branded products via some disputed domain names, such as <outletjuicycoutureshop.com> and <outletsjuicycoutures.com> (Exhibit D to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names’ registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

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

(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain names in bad faith.

a). Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the JUICY Mark with regard to its products. Complainant has registered and used its JUICY Marks internationally, including registration in the United States (since 1999). Moreover, according to Complainant, “Respondent is using two of the disputed domain names - <outletjuicycoutureshop.com> and <outletsjuicycoutures.com> - in connection with websites offering Complainant’s products and appearing to be created by Complainant itself… The Websites are designed to appear to be official sites belonging to or authorized by Complainant. The JUICY Marks appear throughout the Websites, and are clearly intended to mislead viewers as to the source of the Websites”. (See also Exhibit D to the Complaint).

Respondent would not have advertised products purporting to be JUICY products on the websites if it was unaware of Complainant’s reputation. In the other words, it is not conceivable to this Panel that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain names. The Panel therefore finds that the JUICY Marks are not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant’s JUICY branded products.

b). Used in Bad Faith

Complainant has adduced evidence to prove that by using confusingly similar disputed domain names, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s JUICY branded products and services without authorization.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HK0800008).

Given the widespread reputation of the JUICY Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. In terms of disputed domain names, there is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names are resolved. In other words, Respondent has through the use of a confusingly similar disputed domain names and webpage contents (e.g. webpages of <juicycoutureoutletbest.com> and <juicycoutureoutletbuy.com>, see Exhibit D to the Complaint) created a likelihood of confusion with the JUICY Mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain names, potential Internet users are led to believe that the websites resolved by disputed domain names are either Complainant’s sites or the sites of official authorized partners of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain names are used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use disputed domain names which are confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the websites on to which the disputed domain names resolve is indicative of registration and use of the disputed domain names in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <juicycoutureoutletbest.com>, <juicycoutureoutletbuy.com>, <outletjuicycoutureshop.com>, <outletsjuicycoutures.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: December 17, 2012