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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JA Apparel Corporation v. Inova Research Group, Inc. and Kenneth Choi d/b/a Inova Research Group, Inc.
Case No. D2002-0706
1. The Parties
Complainant is JA Apparel Corporation ("JA"), a corporation of the state of Delaware, of New York, New York, United States of America.
Respondents are Inova Research Group, Inc. and Kenneth Choi d/b/a Inova Research Group, Inc. (collectively, "Respondents"), of New York, New York, United States of America.
2. Domain Name and Registrar
The domain name at issue is: <josephabboud.com> (the "Domain Name").
The registrar is Network Solutions, Inc. ("NSI"), 487 East Middlefield Road, Mountain View, California 94043, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint by e-mail on July 25, 2002, and in hard copy on July 30, 2002. The Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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"). Complainant made the required payment to the Center.
On July 26, 2002, the Center transmitted, via e-mail to NSI, a request for registrar verification in connection with this case. On August 2, 2002, NSI transmitted, via e-mail to the Center, its response, confirming that (1) a copy of the Complaint was sent to it by Complainant as required by Supplemental Rule 4(b); (2) the Domain Name was registered through it; (3) Respondent Inova is the current registrant of the Domain Name; (4) the Administrative, Technical and Billing Contacts for the Domain Name are Kenneth Choi whose contact information is that of Inova Research Group, Inc.; (5) the Policy applies to the Domain Name; and (6) the Domain Name is active.
NSI further stated that its records indicated that the Domain Name was subject to current litigation. On August 5, 2002, the Center inquired whether NSI had further information with regard to the said litigation. On August 7, 2002, NSI responded that the litigation was in the Southern District of New York and was captioned Joseph Abboud v. Inova Research Group.
On August 5, 2002, the Center requested that Complainant supplement its Complaint to provide details of the litigation. On August 6, 2002, Complainant advised the Center that it was unaware of any such litigation. On August 8, 2002, the Center provided the information received from NSI on August 7, 2002, regarding the lawsuit in the Southern District of New York and requested that Complainant clarify the nature and status of the litigation.
On August 21, 2002, Complainant filed an Amendment to the Complaint noting that in March 2000, an individual named Joseph Abboud (JA’s predecessor-in-interest to the trademark at issue here), had commenced a lawsuit in federal court against Respondent Inova, in the Southern District of New York, seeking transfer of the Domain Name to himself. Annexed to the Amendment is a copy of the court docket for the said case, which reflects the fact that on August 14, 2000, the case was discontinued with prejudice by stipulation of the parties thereto, endorsed by the judge, and the case was closed.
On August 26, 2002, upon receipt of hard copies of the Amendment, the Center confirmed that the formal requirements were complied with, and sent the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint and the Amendment, via courier, fax, and e-mail to Respondents. The Center also provided copies to the Complainant and NSI. The Center advised Respondents that their Response was due by September 15, 2002, pointed out that the Response should be in accordance with the Rules and the Supplemental Rules, and described the consequences of a default if the Response was not sent by the due date, including that an administrative panel would be appointed to consider and decide the case, that the panel would not be required to consider any late-filed response but could in its discretion do so, and that it could draw appropriate inferences from a default. The Center also noted that Complainants had elected to have a single panelist decide this matter.
No Response was received from Respondents by the September 15 deadline (or at any other time). On September 18, 2002, the Center transmitted to Respondents, via e-mail and courier, a Notification of Respondent Default. The Center advised Respondents that (a) Respondents had failed to comply with the deadline for submission of their Response and (b) the consequences of default, including (1) a single panelist would be appointed (per the Complainant’s request); (2) the Panel would be informed of Respondents’ default and would decide, in its sole discretion, whether to consider a Response if submitted later; and (3) notwithstanding the default, the Center would continue to send all case-related materials to Respondents.
On September 24, 2002, the Center advised the parties, in accordance with Rule 6(f), of the appointment of Michael Albert, the undersigned, as the Panelist in this case, and transmitted the case file to the Panel.
4. Factual Background; Parties’ Contentions
a. The Trademark
The Complaint is based on Complainant’s alleged ownership of rights in the mark JOSEPH ABBOUD. Complainant claims, and has adduced evidence showing, that use of this mark dates back to 1986; that it was federally registered by Mr. Joseph Abboud in 1992, and was assigned to Complainant JA by written agreement dated July 13, 2000. Complainant thus owns several federal registrations for this mark, both in block letters and in stylized form, in connection with men’s and women’s apparel and several other classes of goods and services including fashion accessories and household furnishings.
One of these registrations, U.S. Reg. No. 1,675,915, is for the word mark JOSEPH ABBOUD in block letters. A block-letter registration is the broadest claim to a word mark, in that it is "not … restricted to any particular form or type." Exxon Corp. v. National Foodline Corp., 579 F.2d 1244, 1247 (C.C.P.A. 1978). This registration issued in 1992 for men’s and women’s apparel and remains in force.
b. Jurisdictional Basis
The dispute is within the scope of the Policy, and the Panel has jurisdiction to decide the dispute.
Complainant avers that each of the three requirements of Paragraph 4(a) of the Policy have been satisfied.
c. The Complaint
Complainant asserts as follows:
- Complainant JA owns the mark JOSEPH ABBOUD. JA is in the business of designing, manufacturing and distributing apparel under that mark, and licensing it to others. JA has never licensed the mark to Respondents.
- Complainant’s rights in the mark date back to 1986. The mark has been prominently displayed in products and on advertising since that date, and now enjoys worldwide fame.
- On April 18, 1998, – many years after the JOSEPH ABBOUD mark had been in use in the U.S. and abroad – Respondents first registered the Domain Name.WIPO Case No. D2000-0820
- On May 17, 2002, JA attempted to deliver a letter about this dispute to Respondents, only to learn that Respondents do not now, and never did, maintain an address at the location listed in their Domain Name registration.
- Using a private investigator, Complainant located Respondents and delivered a letter to them demanding a transfer of the Domain Name and a cessation of trademark infringement. Respondents did not respond to the letter.
- The Domain Name is identical to the trademark; Respondents have no legitimate rights thereto; and have acted in bad faith.
- Respondents have made no use of the Domain Name.
- Respondents have no link to the JOSEPH ABBOUD name or mark.
- Respondents have engaged in a pattern of bad faith domain name registration as demonstrated in a prior case decided under the Policy, Gaulme SA & Jean-Paul Gaultier SA v. Inova Research Group, (October 24, 2000), in which Respondents similarly registered a domain name confusingly similar to the trademark of a famous clothing designer.
d. The Response
As noted above, Respondents filed no Response (timely or otherwise) and are in default pursuant to Rule 5(e), Rule 14 and Supplemental Rule 7(c).
Unlike in a U.S. court proceeding, however, a default does not automatically result in a finding for the Complainant. Rather, under Paragraph 4(a) of the Policy, it remains the Complainant’s burden to establish that all three of the required criteria for a transfer of the Domain Name or other remedy have been met.
Under Rule 5(e) and Rule 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under Rule 14(b), the Panel is empowered to draw such inferences from the default as it considers appropriate.
5. Discussion and Findings
a. Regulations Applicable to Consideration of the Merits
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the Response (or lack thereof), the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Rule 15(a). In the Panel’s view, given that both parties to this dispute appear to be based in the United States, applicable authority shall include relevant principles of United States trademark law.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the Domain Name, each of the following:
(i) The Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; and
(ii) Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondents, would demonstrate their rights or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii).
b. Effect of the Default
In this case, the Panel finds that as a result of the default, Respondents have failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.
In particular, by defaulting and failing to respond, Respondents have failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondents have any rights or legitimate interest in the Domain Name, such as use or preparation to use the Domain Name prior to notice of the dispute, being commonly known by the Domain Name, or making legitimate noncommercial or fair use of the Domain Name.
c. Complainant’s Proof
(i) Domain Name Identical or Confusingly Similar to Trademark
Complainant JA has proven that it owns trademark rights in the mark JOSEPH ABBOUD. JA’s registrations of its mark on the Principal Register of the U.S. Patent and Trademark Office establish a presumption of validity of the marks under United States law. See 15 U.S.C. § 1057(b); Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999). Additionally, the registrations constitute constructive notice to all other parties of Complainant’s ownership of the marks. See 15 U.S.C. § 1072.
In comparing Complainant’s mark to the Domain Name, it is well established that the generic top-level domain, in this case ".com," must be excluded from consideration as being a generic or functional component of the Domain Name. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000).
The remaining terms are precisely identical, but for the insignificant deletion, in the Domain Name, of the space between the first and last name (an alteration that is purely functional, since domain names cannot contain blank spaces). Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to Complainant’s mark.
(ii) Whether Respondent Has Rights or Legitimate Interest in the Domain Name
There is no evidence in the record that Respondents have any legitimate interest in the Domain Name. JA’s contention that it has never licensed the Domain Name to Respondents is credible and unrebutted. The federal registration of Complainants’ mark, taken together with the Domain Name’s being identical to JA’s mark, and Respondents’ failure to advance any of the defenses provided in Paragraph 4(c) of the Policy lead this Panel to conclude that Respondents have no rights or legitimate interest in the Domain Name.
(iii) Registration and Use in Bad Faith
Complainant’s third hurdle is to establish that Respondents have registered and used the Domain Name in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. Other types of bad faith may be found as well.
One of the illustrations of bad faith in Policy paragraph 4(b) occurs when the registrant registers the domain name to prevent the trademark owner from reflecting the mark in a corresponding domain name, particularly when the respondent has engaged in a pattern of such conduct. The Panel finds this illustration applicable here. Respondents have registered the Domain Name, thereby preventing JA from using its exact trademark on the Internet (at least under the ".com" top-level domain most often preferred in the world of e-commerce). Moreover, as found in the Gaulme case cited above, Respondents have engaged in a pattern of such conduct.
In addition, the fact that Respondents have registered, and passively held, a domain name identical to the mark of a well-known clothing designer that owns a federally registered trademark of which Respondents must have been aware is alone strong evidence of bad faith. See Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541 (August 22, 2000) (registration of domain names incorporating well-known trademarks owned by third parties is "compelling evidence" of bad faith).
Bad faith may also be found from Respondents’ use of false contact information. See Audi AG v. Hans Wolf, WIPO Case No. D2001-0148 (March 15, 2001) (failure to update its address with the registrar indicated that respondent had "taken active steps to hide its true identity" and thus was a factor suggesting bad faith). Here, Respondents used a false address in their registration. When ultimately reached anyway, they ignored or refused to respond to a cease-and-desist letter from counsel for JA.
These facts, taken together with Respondents’ passive holding of the Domain Name for four years with no apparent use or preparations to use it, as well as Respondents’ default and thus lack of any response or explanation of any of the above matters, lead the Panel to conclude that Complainant has met its burden of proving bad faith.
6. Effect of the Prior Litigation
Finally, although neither party has raised the issue, the Panel should consider whether JA’s rights as asserted in this proceeding are affected by the terminated litigation between Mr. Joseph Abboud and Respondent Inova relating to the Domain Name.
The Panel concludes that the litigation has no effect on JA’s rights.
In the litigation, filed in March 2000, Mr. Abboud asserted a right to the Domain Name arising out of the rights he then held in the JOSEPH ABBOUD trademark. By agreement effective as of July 13, 2000, he assigned all his rights in that trademark to JA. In August 2000, by stipulation, endorsed by the Court, Mr. Abboud’s legal action was "discontinued with prejudice." Respondents could perhaps argue (although they have not advanced this, or any, argument) that the termination of the case with prejudice precludes Mr. Abboud, or any successor-in-interest, from pursuing legal action claiming rights in the Domain Name.
The argument, however, would fail. The assignment of Mr. Abboud’s rights was effective as of July 13, 2000. That date was prior to the termination with prejudice of the litigation. Accordingly, as of the acquisition date, JA was not barred from obtaining relief against Respondents. It does not appear that JA was ever made a party to the litigation, so it is doubtful that it could have been bound by any stipulations or rulings subsequently entered in that case. Indeed, for all this Panel can determine, Mr. Abboud’s decision to stipulate to a dismissal with prejudice of his claim to the Domain Name could well have resulted from the fact that he no longer owned the underlying trademark rights, having assigned them to JA. In short, JA’s trademark rights are unaffected by the post-acquisition termination with prejudice of claims asserted by Mr. Abboud individually.
In light of the findings and analysis by the Panel, the Panel decides that Complainant JA Apparel Corporation has met its burden of proving: (1) the Domain Name is identical or confusingly similar to Complainant’s trademark; (2) Respondents have no rights and no legitimate interest in respect of the Domain Name; and (3) the Domain Name has been registered and is being used by Respondents in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that the Domain Name be transferred to Complainant.
Michael A. Albert
Dated: October 8, 2002