Westmore · UDRP DecisionJcrewsaleoutlet.com
The Panel ordered transfer of <jcrewsaleoutlet.com>. It found the Domain Name confusingly similar to Complainant's registered J. CREW mark, held that Complainant established an unrebutted prima facie case that Respondent lacked rights or legitimate interests, and concluded that Respondent registered and used the Domain Name in bad faith through a competing commercial website referring to J. Crew, using Complainant's photographs, and offering goods including alleged counterfeit J. Crew goods.
The timeline behind jcrewsaleoutlet.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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The decision illustrates a straightforward trademark-plus-retail-terms case in which the domain itself and the content of the associated website pointed to deliberate targeting. The removal of punctuation and addition of “sale” and “outlet” did not reduce similarity, while direct references to J. Crew, competing commercial sales, use of Complainant's photographs, and continued use after notice supported the remaining elements.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION J. Crew International, Inc. v. Susanna Manukyan Case No. D2018-1245 1. The Parties Complainant is J. Crew International, Inc. of New York, New York, United States of America (“USA”), represented by Cowan, Liebowitz & Latman, PC, USA. Respondent is Susanna Manukyan of Wilmington, Delaware, USA. 2. The Domain Name and Registrar The disputed domain name <jcrewsaleoutlet.com> (the “Domain Name”) 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 June 5, 2018. On June 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 5, 2018, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 29, 2018. The Center appointed Harrie R. Samaras as the sole panelist in this matter on July 10, 2018. 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 and its predecessors, through its affiliated companies and licensees, have been engaged in the apparel business since 1983. Complainant owns trademark and service mark registrations for J. CREW worldwide including USA Trademark Registration No. 1,308,888 issued December 11, 1984 (“the J. CREW Mark” or “the Mark”). Complainant owns the domain name <jcrew.com> that it registered in 1994. It resolves to an active website located at “www.jcrew.com”. This website logs millions of visits each year. Complainant also owns the domain name <jcrewoutlet.com>, which it registered in 2001. It resolves to an active website located at “www.factoryjcrew.com”. The Domain Name was registered on February 6, 2018. The Domain Name resolves to a website that purports to offer Complainant’s goods, as well as those of Complainant’s competitors, for sale at heavily discounted prices. Complainant alleges that the goods are in fact counterfeit. Complainant first learned of the Domain Name on or about February 15, 2018. On March 28, 2018 and April 27, 2018, Complainant’s counsel wrote to Respondent demanding that Respondent voluntarily transfer the Domain Name to Complainant. Respondent did not respond to either correspondence. 5. Parties’ Contentions A. Complainant As a result of long and continuous use of the J. CREW Mark and substantial investment of time, money and effort in advertising and promoting its services, the Mark has developed recognition and goodwill. The J. CREW Mark is a famous mark. Complainant has demonstrated rights in the J.CREW Mark through the above-mentioned USA Trademark Registration. The Domain Name is confusingly similar to the J. CREW Mark because the distinctive feature of the Domain Name is the J. CREW Mark without the period. The suppression of punctuation marks such as hyphens or periods is not alone sufficient to avoid a finding of confusion. Further, the addition of a generic word such as “sale” or “outlet” does not distinguish the Domain Name from the J. CREW mark. In fact, adding the terms “sale” and “outlet” to the J. CREW Mark would be expected by Internet users searching for Complainant’s products. Furthermore the generic Top-Level Domain “.com” does not alter the similarity of the Domain Name and Complainant’s J. CREW Mark. Upon information and belief, Respondent’s personal name is not “Jcrewsaleoutlet”, rather it is Susanna Manukyan, a name that has no obvious relationship to J. Crew. Additionally, upon information and belief, Respondent does not actually engage in any legitimate business under the name “Jcrewsaleoutlet”. Rather, Respondent uses the Domain Name to engage in selling unauthorized, counterfeit goods under the J. CREW mark. Moreover, Respondent is not commonly known by the Domain Name. Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use Complainant’s J. CREW Mark, much less the Domain Name. Indeed, Respondent has no relationship whatsoever to Complainant. Respondent has no rights or legitimate interests in the Domain Name because it is not using the Domain Name in connection with any bona fide offering of goods and services. As of the date of this letter, the Domain Name resolves to an active website allegedly selling J. Crew products. The site displays the heading J. CREW COLLECTION in violation of Complainants trademark rights and includes Complainant’s copyrighted images featuring J. Crew products. Respondent presumably receives monetary benefits from this site. Such use is not a use in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Respondent is using the Domain Name to redirect Internet users to a website whose content is related to Complainant’s businesses. Since the Domain Name is confusingly similar to the J. CREW Mark, Internet users are likely to become confused as to Complainant’s possible affiliation with Respondent’s websites. And, presumably, Respondent profits from this confusion by selling illegitimate goods. As a result, Respondent’s use of the Domain Name constitutes bad faith registration and use. Respondent initially registered and is continuing to use the Domain Name in bad faith despite knowing of Complainant’s pre-existing rights in the J. CREW Mark. In this case, there is no doubt that Respondent knows of Complainant’s rights in the J. CREW Mark because of Complainant’s cease and desist letters. Respondent has also registered and is using the Domain Name in bad faith because the Domain Name is identical and/or confusingly similar to Complainant’s famous J. CREW Mark. Furthermore, the Respondent is presumed to have had constructive notice of the J. CREW Mark’s registration at the time it registered the Domain Name. The Domain Name has been used by Respondent in connection with a website that contains numerous copyrighted photographs that belong to Complainant and which have been copied and used without Complainant’s consent. This causes consumer confusion and constitutes bad faith. An intentional infringement of Complainant’s copyright may amount in itself to bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that Complainant has trademark rights in the J. CREW Mark by virtue of, for example, USA. Trademark Registration No. 1,308,888. The Panel also finds that the Domain Name <jcrewsaleoutlet.com> is confusingly similar to Complainant’s J. CREW Mark. The Domain Name incorporates the Mark in its entirety and removes a period after the “J” and adds the descriptive terms “sale” and “outlet”. It has been held under the Policy that the suppression of punctuation marks such as hyphens or periods does not avoid a finding of confusing similarity. See Fifth Third Bancorp v. Web Domain Names , WIPO Case No. D2005-0185 (domain name <retire53.com> found to be confusingly similar to complainant’s RETIRE.53.COM mark). Further, adding descriptive terms such as “sale” or “outlet” does not avoid confusing similarity between the Domain Name and the J. CREW mark. See J. Crew International, Inc. v. Lin Chengying , WIPO Case No. D2010-1884 (“the addition of the non-distinctive words “dresses” and “outlet”, words frequently used in retailing and marketing of branded clothing goods, does not serve to distinguish the disputed domain names from the Trade Mark in any way”); Alstom v. Yulei , WIPO Case No. D2007-0424 (“Numerous WIPO UDRP decisions have recognized that adding a generic word is insufficient to give any distinctiveness to the domain name”). In fact Complainant made of record here screen shots of pages from its two websites <jcrewoutlet.com> and <JCREW.COM> using the same descriptive terms “sale” and “outlet” that are in the Domain Name. Furthermore the generic Top-Level Domain e “.com” does not alter the similarity of the Domain Name and the J. CREW Mark. See Orbis Holdings Limited v. Lu A Feng and Orbis Search , WIPO Case No. D2007-0515 . For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interests in the Domain Name because: (1) Respondent’s personal name is not “jcrewsaleoutlet”; (2) Respondent is not commonly known by the Domain Name; (3) Respondent is not a licensee of Complainant, nor has Complainant authorized Respondent to register or use the J. CREW Mark for any purpose, including in the Domain Name; (4) Respondent is not engaged in a legitimate business under the Domain Name because it uses it to sell unauthorized, counterfeit goods under the J. CREW Mark; (5) The Domain Name resolves to an active website allegedly selling J. Crew products, displaying the heading J. CREW COLLECTION in violation of Complainant’s trademark rights, and using Complainant’s copyrighted images featuring J. Crew products; and (6) Respondent presumably receives monetary benefits from this site. Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Names. The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and used the Domain Name in bad faith. Complainant’s long-standing rights in the J. CREW Mark are uncontroverted, as is the fact that Respondent registered the Domain Name long after Complainant established its rights in the Mark. Furthermore, Respondent is using the Domain Name to redirect Internet users to a website that is referring to Complainant and allegedly its apparel “on sale” or from an “outlet” along with numerous copyrighted photographs belonging to Complainant. Thus, Respondent would have to have known about Complainant and its rights in the Mark when registering the Domain Name to be used with a website that is aimed to compete with Complainant’s business. Furthermore, the Domain Name, which is confusingly similar to the J. CREW Mark, is being used on a competing website from which Respondent is clearly profiting by selling goods in competition with Complainant alongside what are alleged to be counterfeit versions of Complainant’s goods. The website also contains numerous copyrighted photographs that belong to Complainant, compounding the consumer confusion and adding to the bad faith use of the Mark. See TPI Holdings Inc. v. JB Designs , WIPO Case No. D2000-0216 . Further evidence of bad faith use is that Respondent continued to use the Domain Name after receiving cease and desist letters informing her of Complainant’s rights in the J. CREW Mark and demanding that she cease using it. The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of 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 Domain Name <jcrewsaleoutlet.com> be transferred to Complainant. Harrie R. Samaras£ Sole Panelist Date: July 13, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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