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Generic Top Level Domain Name (gTLD) Decisions |
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Just Jeans Group Limited v. Domain Trade
Case No. D2000-1821
1. The Parties
The Complainant is Just Jeans Group Limited, an Australian public company, with its head office in Melbourne, Australia. It is represented by Mr. John Gibbs of Philips Ormonde & Fitzpatrick, Melbourne, Australia.
The Respondent is Domain Trade of PO Box 3482, Mexico City, Mexico City, 0000, Mexico.
2. The Domain Name and Registrar
The domain name in issue is "just-jeans.com". The domain name is registered with Easyspace Limited, Rosemount House, Rosemount Avenue, West Byfleet, Surrey KD14 6LB, UK. The domain name was registered on June 15, 2000.
3. Procedural History
The Complaint submitted by Just Jeans Group Limited was received on December 27, 2000, (hard copy) and January 9, 2001 (electronic copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On January 8, 2001, a request for Registrar verification was transmitted by the WIPO Center to Easyspace Limited, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with Easyspace.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name.
Indicate the current status of the domain name.
By email dated January 8, 2001, the Registrar advised WIPO Center as follows:
Easyspace Limited had received a copy of the Complaint sent by the Complainant.
Easyspace Limited is the Registrar of the domain name registration "just-jeans.com".
The Registrant is: Domain Trade
PO Box 3482
Mexico City
Mexico City
000/Mx
The administrative and billing contact is "Mr Registrar",domaintrade@hotmail.com, Phone: +90, facsimile: nil.
The technical contact Registrar is
Easyspace Hostmaster
hostmaster@easyspace.com,
http://www.easyspace.com,
Facsimile: +44-1932-350-222.
The Uniform Dispute Resolution Policy is applicable to "just-jeans.com".
The domain name registration "just-jeans.com" is "registrar locked and is currently redirecting to a website at "http://www.generalpants.com.au."
The advice from Easyspace Limited that the domain name in question is still "active", indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with Easyspace Limited. Accordingly, the Respondent is bound by the provisions of Uniform Domain Name Dispute Resolution Policy ("Policy").The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Polcy ("Rules") and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the WIPO Center on January 9, 2001, transmitted by post, fax and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also sent by email to Easyspace Limited on January 9, 2001.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., January 28, 2001). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by an original and four sets in hard copy and by email. No response was received from the Respondent by January 28, 2001.
On February 2, 2001, the WIPO Center invited Andrew Brown, Barrister, of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On February 7, 2001, Andrew Brown advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On February 7, 2001, WIPO Center forwarded to Andrew Brown by email the relevant submissions and the record. The full copy of the Complaint was sent by courier and received by him on February 12, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by February 21, 2001.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any proper Response from the Respondent.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant is one of the largest specialty apparel retailers in Australasia with some 480 stores and over 2,600 employees. The trademark JUST JEANS is a registered trademark in Australia in classes 16, 18, 24, 25 and 42. The trademark is also registered in New Zealand and South Africa in classes 25 and Taiwan in class 40.
The Complaint states that the Respondent has set up the domain name "just-jeans.com" so that traffic is redirected to the Australian-based website of General Pants Co, a competitor of the Complainant. The Complaint also states that General Pants Co, has confirmed that its consent was never given for this redirection. The advice from the Registrar confirms that "just-jeans.com" is "registrar locked and currently redirecting to "generalpants.com.au".
The evidence presented by the Complainant shows that the Respondent has registered two other domain names of well-known Australian companies:
(a) The first is "coles-myer.com", the name and trademark of Coles Myer Limited, one of the largest retailers in Australia. This website redirects visitors to "woolworths.com.au", the website of Woolworths Limited, a competitor and the second largest retailing organisation in Australia. This is the subject of a separate complaint by Coles Myer Limited (D2000-1820).
(b) The second is "rebel-sport.com", the name and trademark of Australia’s largest specialty sporting goods retailer. This domain name redirects to a website, which states that this has been registered by the domain name registrar Easyspace Limited "for a client".
5. Parties’ Contentions
A. The Complainant
The Complainant contends in summary that:
(a) The domain name "just-jeans.com" is identical to the registered trademark and well-known name of the Complainant with the exception that there is a hyphen separating the two terms. A hyphen is confusingly similar.
(b) The Respondent has no rights or legitimate interest in the domain name "just-jeans.com". The Respondent is not commonly known by that name, nor is the Respondent using the site in connection with the bona fide offering of goods or services or for a legitimate reason;
(c) The domain name is being used misleadingly to divert customers and to tarnish the Complainant’s well-known and respected trademarks.
B. The Respondent
The Respondent has not responded to the Complaint.
6. Discussion and Policy
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
Domain name is identical to registered trademark
The Panel finds the domain name "just-jeans.com" is identical to the Complainant’s registered trademarks in Australia, New Zealand, South Africa, and Taiwan. The addition of the hyphen is an immaterial difference. The Panel so decides.
No legitimate rights or interests
Paragraph 4(c) of the Policy sets out three circumstances in which a registrant may prove to the satisfaction of the Panel, a right or legitimate interest in the domain name at issue. These are as follows:
(i) Before any notice to the registrant of the dispute, the registrant’s 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) The registrant (as an individual, business or other organisation) has been commonly known by the domain name, even if the registrant has acquired no trade mark or service mark rights; or
(iii) The registrant is making a legitimate, non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds that the Respondent has no legitimate rights or legitimate interests in relation to the trade mark JUST JEANS or the domain name "just-jeans.com". There is no evidence that the Respondent has ever used the trademark JUST JEANS or that it has ever previously offered bona fide goods or services under that name or trade mark. Additional matters, which support the Panel's finding, are:
Domain name has been registered and is being used in bad faith
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a 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 website 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 website or location or of a product or service on your website or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel finds that the Respondent registered the domain name and is using it in bad faith for the following reasons:
(a) The circumstances show that the Respondent registered the domain name with the intent of selling it to the Complainant: paragraph 4(b)(i). The Complainant provides evidence that an email was sent to it by the Respondent in June 2000 offering to sell the domain name. (It is to be noted that the domain name was registered on June 15, 2000.) The Complainant has since deleted the email without keeping a copy. But it has produced a copy of its reply on June 23, 2000 declining this offer.
The evidence shows a further attempt by the Respondent to sell the domain name to the Complainant three months after its first offer was declined. The email stated:
"We were alerted late last week by a journalist from an Australian newspaper (Australian and Financial Review) that an article regarding the ownership of "www.just-jeans.com" and "www.coles-myer.com" was been researched. We believe the contents of the article may prove damaging to the brands concerned.
Since your company declined to purchase this domain name in June, we have received an offer from an Australian entity to redirect this site to another address. This transaction has yet to be finalised. As mentioned in our previous correspondence, we appreciate the importance to you of the JUST JEANS domain name and the impact this redirection may have on your brand. In light of this, we would like to reoffer the domain to you for purchase at a reasonable fee. In order to protect your brand, any sale of the "www.just-jeans.com" domain name to you would be handled in the strictest confidence by our nominated solicitor in Australia.
If you are interested in pursuing this matter further, please do hesitate to contact us."
(b) There is a pattern of similar activity by this Respondent in respect of two other websites involving trademarks of well-known Australian retailers i.e. "coles-myer.com" and "rebel-sport.com". Previous panels have regarded evidence indicating a respondent owning other domain names which correspond with well-known third party trade marks as prima facie evidence satisfying sub-paragraph 4(b)(ii) of the Policy that the Respondent "has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark and the corresponding domain name, provided that you have engaged in a pattern of such conduct": Inter-IKEA Systems BV v Technology Education Centre, WIPO Case No. D2000-0522; Indy Mac, Inc v Financial Insurance Associates, WIPO Case No. D2000-0535.
(c) The use of the website is in bad faith. The actions of the Respondent in redirecting those visiting "just-jeans.com" to the website "generalpants.com.au" shows an intent to disrupt the business of the Complainant. The Complainant states that no consent was ever given by General Pants Company, the owner of the website "generalpants.com.au" for this redirection. Further that this use is causing disruption to the business of both the Complainant and General Pants Company and is causing confusion to customers. It is a fair inference that the Respondent’s actions in redirecting the site to a competitor were to put pressure on the Complainant to purchase the domain name. However it is not necessary for the Panel to make any finding on this point;
(d) The actions of the Respondent in redirecting visitors to "just-jeans.com" to a competitor’s website will cause confusion to customers as to the source, sponsorship and affiliation of that website.
The Panel therefore concludes that the Complainant’s claim that the domain name has been registered and is being used by the Respondent in bad faith has been made out.
7. Decision
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is identical to the JUST JEANS trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondent’s domain name has been registered and used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "just-jeans.com" be transferred to the Complainant.
Andrew Brown
Sole Panelist
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URL: http://www.worldlii.org/int/other/GENDND/2001/398.html