national arbitration forum

DECISION

Lucky Brand Dungarees, Inc. v. Noel Cole

Claim Number:  FA0411000363048

PARTIES

Complainant is Lucky Brand Dungarees, Inc. (“Complainant”), represented by Gene Bolmarchich, of Liz Clairobne, Inc., Legal Department, One Claiborne Avenue, North Bergen, NJ 07047. Respondent is Noel Cole (“Respondent”), Post Office Box 518, Avon, CO 81620.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <luckybrand.com>, registered with Register.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 15, 2004.

On November 11, 2004, Register.com confirmed by e-mail to the National Arbitration Forum that the domain name <luckybrand.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On November 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 7, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@luckybrand.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On December 14, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <luckybrand.com> domain name is identical to Complainant’s LUCKY BRAND mark.

2. Respondent does not have any rights or legitimate interests in the <luckybrand.com> domain name.

3. Respondent registered and used the <luckybrand.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, a designer, manufacturer, and distributor of clothing products, holds multiple U.S. trademark registrations for the LUCKY BRAND mark, including U.S. Reg. No. 1,646,123 (issued May 28, 1991). Complainant has used the LUCKY BRAND mark for 14 years on various apparel items and is well known to customers throughout the world. Complainant promotes its products and mark through magazine and billboard advertisements and through sponsorship of film festivals. Complainant operates 94 retail stores under the LUCKY BRAND JEANS or LUCKY BRAND DUNGAREES marks throughout the U.S. Complainant also operates a website at the <luckybrandjeans.com> domain name.

Respondent registered the <luckybrand.com> domain name on October 7, 1999. The disputed domain name resolves to a website entitled “High Times” that is devoted to marijuana. On May 23, 2003, the disputed domain name resolved to a website that included sponsored links to sites offering goods that compete with Complainant’s products. Respondent is not a licensee of Complainant nor is Respondent authorized to use Complainant’s marks for any purpose.

DISCUSSION

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

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

Identical and/or Confusingly Similar

Complainant has established that it has rights in the LUCKY BRAND mark through registration with the United States Patent and Trademark Office and through continuous use of the mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).

The disputed domain name is identical to Complainant’s LUCKY BRAND mark because it fully incorporates the mark while merely removing a space between the words of the mark and adding the “.com” generic top-level domain. It is well established that neither the deletion of a space between words in a trademark nor the addition of a generic top-level domain distinguish a domain name from the trademark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant is able to establish a prima facie case by showing that Respondent does not qualify for the three “safe harbors” provided under Policy ¶¶ 4(c)(i)-(iii). Such a showing shifts Complainant’s burden to Respondent, who must come forward with evidence rebutting Complainant’s allegations in order to prevail on this element. In this case, Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“[p]roving that the Respondent has no rights or legitimate interests in respect of the [d]omain [n]ame requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for [R]espondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Since Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the <luckybrand.com> domain name, the burden is shifted to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. In this proceeding, Respondent has not submitted a Response. Thus, Respondent has failed to present any circumstances under which it could substantiate rights or legitimate interests in the disputed domain name. Furthermore, because Respondent has failed to submit a Response in this proceeding, the Panel may accept as true all reasonable allegations submitted by Complainant in the Complaint. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Respondent is using the <luckybrand.com> domain name to direct Internet users to a website offering information about marijuana production and use. Moreover, the domain name was used in the past to divert Internet users to a website that provided lniks to Complainant’s competitors. Respondent’s use of a domain name that is identical to Complainant’s LUCKY BRAND mark dilutes the mark by diverting Internet users to a website unrelated to that mark and is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Furthermore, no evidence in the record suggests that Respondent is commonly known by the <luckybrand.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s registration of the disputed domain name, a domain name that is identical to Complainant’s well known registered mark, suggests that Respondent knew of Complainant’s rights in the LUCKY BRAND mark. Additionally, Complainant’s trademark registration on file at the United States Patent and Trademark Office gave Respondent constructive notice of Complainant’s mark. Moreover, the domain name previously resolved to a website that provided links to Complainant’s competitors. Thus, the Panel finds that Respondent chose the <luckybrand.com> domain name based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Furthermore, the Panel infers from evidence in the record that Respondent registered the domain name for commercial gain. In the past, Respondent’s domain name diverted Internet users wishing to search under Complainant’s well-known mark to a website with sponsored links to providers of goods that competed with Complainant’s products. The Panel infers that Respondent received pay-per-click commissions when Internet users followed the links. Respondent’s practice of diversion, motivated by commercial gain, through the use of a domain name identical to Complainant’s mark evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) (“[w]hile an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <luckybrand.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  December 28, 2004

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