Jones Apparel Group, Inc. v. Administrative Contact; Billing Contact; Jonesapparelgroup.com; Technical Contact

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jones Apparel Group Inc .v. Jones Apparel Group.com

Case No. D2001-1041

1. The Parties

The Complainant is Jones Apparel Group, Inc of 1411 Broadway, New York, NY 10018,

United States of America.

The Respondent is Jones Apparel Group.com of Prala 8, Bolivia, ch 31235, Bolivia.

2. The Domain Name and Registrar

The domain name at issue is:

<jonesapparelgroup.com>

and the Registrar is:

Network Solutions, Inc

3. Procedural History

The WIPO Arbitration and Mediation Center [the Center] received the Complaint

on August 16, 2001, [electronic version] and on August 17, 2001 [hard copy].

The Center verified that the Complaint satisfies the formal requirements of

the ICANN 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]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is August 30, 2001.

On August 20, 2001, the Center transmitted via email to Network Solutions,

Inc., a request for registrar verification in connection with this case and

on August 21, 2001, Network Solutions, Inc transmitted by email to

the Center Network Solutions' verification Response confirming that the registrant

is Jones Apparel Group.com and that the contact for both administrative and

billing purposes is atte jonesapparelgroup.

Having verified that the Complaint satisfied the formal requirements of the

Policy and the Rules, the Center transmitted on August 27, 2001 to:

postmaster@jonesapparelgroup.com;

jonesapparelgroup.com@HN.NU;

jonesapparelgroup@MG.NU; and to

jones apparelgroup.com@MG.NU

this Notification of Complaint and Commencement of the Administrative Proceeding.

The Center advised that the Response was due by September 16, 2001. On the same

day the Center transmitted by fax and by mail copies of the foregoing documents

to:

Jones Apparel Group.com

Prala 8

Bolivia, ch 31235

Bolivia

atte jonesapparelgroup

Pral 70

Bolivia, ch 31235

Bolivia

jonesapparelgroup

Ocaloyo 12

Trinidad, sc 15233

Bolivia

and to

tter jonesapparelgroup.com

Pralb/Prolb 24

Bolivia, Ch. 31235

Bolivia

No Response was received from the Respondent by the due date of September 16, 2001.

On September 18, 2001, Notice of Respondent Default was sent to the Complainant

and to the Respondent using the same contact details and methods as were used

for the Notification of Complaint and Commencement of the Administrative Proceedings.

No reply by the Respondent to the Notification of the Respondent's Default was

received.

On September 19, 2001, the Center received a Supplemental Complaint with exhibits

A to H. This further communication was also copied by the Complainant to the

Respondent using the same contact details and methods as were used by the Center

for Notification of Complaint and Commencement of the Administrative Proceedings.

No Response to the Supplemental Complaint has been received from the Respondent.

Should the Supplemental Complaint be submitted? Whilst there is no specific

provision in the Rules for permitting a Complainant to make a supplementary

filing, the Panel has a discretion and shall ensure that each Party is given

a fair opportunity to present its case. Decisions in other administrative proceedings

under the Policy have identified the limited circumstances in which supplemental

filings should be admitted. Each case must, however, depend upon its particular

facts.

In this particular case, the Complainant has filed an earlier Complaint against

the same Respondent on May 31, 2001. That Case [No.

D2001-0719] was rejected by the Panel for reasons which will be discussed

below. Apart from the Respondent's address in Bolivia, the Panel in that case

stated that nothing further was known about the Respondent, who failed to file

a Response.

In relation to the Complaint in this administrative proceeding, the Complainant

explains that repeated attempts to contact the Respondent in Bolivia at the

postal address, email address and telephone numbers given as contact information

to Network Solutions, have all been unsuccessful. Two of the three working telephone

numbers listed in Bolivia were answered by individuals who claimed to be totally

unaware that their number was listed as having anything to do with the Respondent.

The Respondent's email address contains the extension .nu, which the

Complaint explains is listed as an Internet sponsor based in Alofi Niue, a tiny

island in the South Pacific. The Complaint concludes that there is no basis

for assuming that the Respondent has any ties with Bolivia and that the Respondent

has no interest in providing contact information to anyone.

The Supplemental Complaint is the fruit of further investigations by the Complainant

from which they claim to have discovered a pattern of conduct by the

Respondent of registering well-known third party trademarks as domain names

so as to prevent those trademark owners from reflecting their marks in corresponding

domain names. This information has been obtained by digging into other domain

name registrants giving technical, billing and administrative contacts with

either of the email address extensions mg.nu or hn.nu. This information

goes to satisfying the requirements of paragraphs 4a(ii) and (iii) of the Policy

and is of assistance to the Panel in making its Decision in this case. Therefore,

in the somewhat unusual circumstances of this case, the Panel will admit the

Supplemental Complaint.

In normal circumstances, the Panel would afford the Respondent additional time

to address the Supplemental Complaint. However, in this case the Panel does

not consider this to be necessary. The Respondent defaulted in filing a Response

in Case No. D2001-0719 and it has also defaulted in this case. There is no likelihood

that it will respond to the Supplemental Complaint either.

On October 2, 2001, having received on October 1, 2001, Mr. David Perkins'

Declaration of Impartiality and Independence and his Statement of Acceptance,

the Center transmitted to the parties a Notification of Appointment of Administrative

Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed

as the Sole Panelist. The Projected Decision Date was October 16, 2001. The

Sole Panelist finds that the Administrative Panel was properly constituted and

appointed in accordance with the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative

Panel finds that the Center has discharged its responsibility under para. 2(a)

of the Rules "to employ reasonably available means calculated to achieve actual

notice to Respondents". Therefore, the Administrative Panel shall issue its

Decision based upon the Complaint, the Supplementary Complaint, the Policy,

the Rules and the Supplemental Rules and without the benefit of any Response

from the Respondent.

4. Factual background

4.1 The Complainant's Business

The Complainant is a leading designer and marketer of branded apparel, footwear

and accessories. It trades under the name Jones Apparel Group and a number of

registered trademarks [see paragraph 4.2 below]. The Complainant was founded

in 1970. It currently has 5 product categories, namely sportswear; suits and

dresses; shoes; fashion accessories and jewellery. Apart from its own house

brand JONES NEW YORK, the Complainant has other house brands including EVAN-PICONE:

NINE WEST: RENA ROWAN: TODD OLDHAM: EASY SPIRIT; and ENZO ANGIOLINI. The Complainant

also retails well known third party brands including LAUREN BY RALPH LAUREN:

RALPH BY RALPH LAUREN: POLO JEANS and TOMMY HILFIGER.

The Complainant currently has 32 Licence Agreements under which independent

licensees sell a variety of products under the JONES APPAREL mark in Canada

and the United States. The Complainant also has 3 wholly owned subsidiaries

in Mexico, certain of its trademarks are registered in South America and its

products are sold throughout Latin America including in Bolivia.

In 1991, the Complainant became a publicly listed company on the New York Stock

Exchange. The Complainant currently employs over 17,000 people worldwide. Its

Year 2000 Accounts show sales in excess of US$4.1 billion and advertising for

its various labels topping US$3 million.

The Complaint exhibits extensive evidence of the Complainant's use of the JONES

APPAREL GROUP mark as its trading name, unsolicited Press Coverage in 1999-2000,

where the JONES APPAREL GROUP name is prominently featured, and hits for JONESAPPARELGROUP

on websites based in various countries appearing in languages including Russian,

Spanish, French and Chinese as well as English.

4.2 The Complainant's Trade Marks

The Complainant exhibits what it refers to as its Jones Family of Marks in

the United States, brief particulars of which are set out below. These are owned

by the Complainant or by its wholly owned subsidiary, Jones Investment Co. Inc.

The

US "Jones Family of Marks" owned by Jones Apparel Group, Inc or it's wholly

owned subsidiary

Trademark

Registration

No

Goods

Registration

Date

JNY

1,684,843

women's apparel,

namely t-shirts, sweaters, shorts, shirts, skirts, jackets, pull-on pants,

blouses and vests

April 28, 1992

JNY

2,197,813

women's outerwear,

namely coats, jackets and raincoats

October 20, 1998

JONES NEW YORK

1,908,984

retail clothing store

services

August 1, 1995

JONES NEW YORK

1,877,670

women's shoes, sandals

and boots

February 7, 1995

JONES NEW YORK

1,714,571

handbags

September 8, 1992

JONES NEW YORK

1,651,879

perfume, cologne

and toilet water

July 23, 1991

JONES NEW YORK

1,362,051

men's constructed

tailored sportcoats and men's constructed tailored suits

September 24, 1985

JONES NEW YORK

1,122,437

men's shirts, jackets,

sportcoats, sweaters, sportshirts, shorts and trousers

July 17, 1979

JONES NEW YORK

1,453,268

clothing namely men's

tailored suits and sportcoats

August 18, 1987

JONES NEW YORK

1,744,614

women's intimate

apparel; namely, bras, panties, leggings, body suits, unitards, camisoles

and chemises

January 5, 1993

JONES NEW YORK

1,665,702

prescription eyeglass

frames

November 26, 1991

JONES WEAR SPORT

2,214.543

clothing for women

and? Namely, dresses, coats, suits jackets, blouses, shirts, sweaters,

shirts, pants, skirts, shorts, hats, scarves, hosiery, socks, lingerie,

sleepwear and footwear

December 29, 1998

JONES WEAR

1,951,957

women's costumer

jewelry, namely earrings, bracelets, necklaces, pins, pendants and rings

January 23, 1996

JONES WEAR

1,592,094

women's blouses

April 17, 1990

JONES WEAR

1,905,736

women's blouses,

suits, skirts, slacks, vests, jackets shorts, dresses, undergarments,

shirts, hosiery, scarves and sweaters

July 18, 1995

MISS JONES

910,101

junior miss, and

women's knitwear, namely knit and woven skirts and blouses for junior,

miss and women, knit and woven skirts, knit and woven pants and slacks,

knit and woven dresses, jackets and coats, all for junior miss, and women

February 16, 1971

JONES NEW YORK SPORT

1,997,393

does, sandals, and

boots

August 27, 1996

JONES NEW YORK SPORT

1,276,320

clothing, namely

sweaters, slacks, shorts, skirts, jackets and vests

May 1, 1984

However, for the purposes of this Complaint the Complainant relies on common

law trademark rights in its trading name JONES APPAREL GROUP, asserting that

those rights subsist by reason of its 30 years trading under and by reference

to that name and mark, the extent and knowledge of that mark being evidenced

by the activities described above.

4.3 The Complainant's Domain Name

The Complainant also maintains a marketing presence on the Internet through

its website at <jny.com>, which currently records some 200,000 hits per

year. The name and mark JONES APPAREL GROUP features prominently at the top

of the first page of that website. Further, the Complainant's products are also

sold on the Internet web sites of various retailers, including Macy's and Bloomingdale's.

The Respondent and its activities

4.4 In the absence of a Response, little is known of the Respondent. The domain

name in issue was registered on April 5, 2001. That name does not resolve to

an active website and there is no evidence of its being used. However, the Complainant's

additional investigations set out in the Supplemental Complaint reveal the following:

- the same telephone number as for the Billing

Contact for the <jonesapparelgroup.com> domain name appears for the registrant

of the <minolta-bolivia.com> domain name, where the registrant is listed

as Nadine Import of Cochabamba, Bolivia,

- the same addresses as for the Registrant

and the Administrative and Technical Contacts and the same telephone numbers

as for the Administrative and Billing Contacts for <jonesapparelgroup.com>

appear for the registrant of the <garfieldonline.com> domain name,

- the same addresses for the Registrant and

the Administrative and Technical Contacts and the same telephone numbers for

the Administrative and Billing Contacts for <jonesapparelgroup.com> appear

for the Administrative and Billing Contacts for the registrant of the <audoboncenter.com>

domain name,

- the .nu sponsoring organisation in

Alohi, Niue lists an Administrative Contact in Alofi, Niue and a Technical Contact

in Massachusetts.

4.5 The Vice President of Minolta Corporation has stated on affidavit that

Minolta operates the <minoltausa.com> domain name and that the

<minolta-bolivia.com> domain name and website is neither registered to

nor authorised by Minolta despite the use of the MINOLTA trademark and logo

at that site.

4.6 In NAF Case No. F97328, Paws Inc., owners of the famous GARFIELD

trademark, succeeded in obtaining transfer of the <garfieldonline.com>

domain name which had been registered without its knowledge or authorisation.

4.7 Nadine Import of Cochabamba, Bolivia, registrant of the <minolta-bolivia.com>

domain name have stated in a letter to the Complainant dated June 12, 2001,

that the telephone number listed for their Administrative and Billing Contact

does belong to them but they have nothing to do with the <jonesapparelgroup.com>

domain name. This is the same telephone number which is listed for the Billing

Contact for the domain name in issue, the Billing Contact for <garfieldonline.com>

and the Billing Contact for <audoboncenter.com>.

5. The Parties' Contentions

5.1 The Complainant

The Complainant's case is that the domain name in issue is identical to its

common law trade mark rights in JONES APPAREL GROUP, that the Respondent has

no rights or legitimate interests in respect of that trade mark, which it has

registered and used in bad faith.

Identical or Confusingly Similar

5.1.1 The Complainant's earlier case against the Respondent [WIPO

Case No. D2001-0719] was rejected for the Complainant's failure even to

plead the existence of common law trademark rights in the name and mark JONES

APPAREL GROUP. The Panel in that case, quite rightly, found no evidence to show

that the Jones Family of Marks [the US registrations are listed in paragraph

4.2 above] could give rise to confusing similarity with the domain name in issue,

the only common feature between that domain name and those registered marks

being the common surname, JONES.

5.1.2 The evidence summarised in paragraph 4.1 above is now sufficient to establish

common law rights in the name and mark JONES APPAREL GROUP. The Complaint cites

the Jeanette Winterson [WIPO Case No.

D2000-0235]; the Bill Withers [WIPO

Case No. D2000-1621] and the Marty Rodriguez Real Estate [WIPO

Case No. D2000-1468] Decisions to demonstrate that common law trademark

rights have been held to apply under the Policy where the Complainant's name

is particularly well known. The obvious difference between this Case and those

Decisions is that here we are dealing with common law trade mark rights asserted

by a trading company, whereas the Decisions cited concerned the reputation of

3 individuals, Winterson an author, Withers a singer, and Rodriguez one of the

world's top real estate agents. The principle is, however, the same and the

test is as stated by the Panel in the earlier Decision [Case

No. D2001-0719], namely:

In order to establish some common law interest, the Complainant must establish

that it has some kind of reputation that inheres in the common law marks, or

that the marks are well-known within a region, or some other indication that

the common law would recognise that the Complainant has rights in the mark.

Rights or Legitimate Interests

5.1.3 In the absence of a Response, there is no evidence of, for example, any

of the circumstances set out in paragraph 4c of the Policy which would demonstrate

a Respondent's rights or legitimate interests in the domain name. Further, the

Complainant has not licensed or otherwise authorised the Respondent to use the

JONES APPAREL GROUP trademark.

5.1.4 As further evidence of a lack of rights or legitimate interests in the

domain name in issue, the Complainant points to the following:

- Its name and mark, JONES APPAREL GROUP,

is so distinctive that the Respondent can have had no legitimate reasons to

register that mark as a domain name.

- The Complainant's trade worldwide is such

that the Respondent could not credibly assert ignorance of the JONES APPAREL

GROUP name, which [as stated in paragraph 4.1 above] is known in Latin America,

including Bolivia, by virtue of both the Complainant's trading in that geographic

area and the existence of various of the Jones Family of Marks which

are registered throughout Latin America.

Registered and Used in Bad Faith

5.1.4 The Panel relies upon a number of factors.

First, the assertion that the Respondent has no rights or legitimate

interests in the domain name in issue.

Second, that the concept of a domain name being used in bad faith is

not limited to positive action; inaction is within the concept [the Telstra

case, WIPO Case No. D2000-0003]. Hence,

the fact that the domain name in issue is not apparently used in relation to

an active website can be an indicia of bad faith.

Third, the existence of the domain name in issue has prevented the Complainant

from reflecting its JONES APPAREL GROUP mark in a corresponding domain name.

Here, as noted in paragraph 4.3. above, the Complainant is obliged to use the

<jny.com> domain name. As to pattern of conduct, the Complainant

points to the evidence submitted in the Supplemental Complaint [see paragraphs

3 and 4.4. above].

Fourth, the Respondent has taken active steps to conceal its true identity

by providing what appear to be false contact details in breach of its Registration

Agreement with Network Solutions.

Fifth, it is not possible to conceive of any plausible actual or contemplated

active use of the domain name by the Respondent that would not be illegitimate,

such as by infringing the Complainant's common law trademark rights, passing-off

or unfair competition.

6. Discussion and Findings

6.1 The Policy paragraph 4a provides that the Complainant must prove each of

the following in order to succeed in an administrative proceeding:

- that the Respondent's domain name is identical

or confusingly similar to a trademark or service mark in which the Complainant

has rights; and

- that the Respondent has no rights or legitimate

interests in respect of the domain name; and

- that the domain name has been registered

and is being used in bad faith.

6.2 The Policy paragraph 4c sets out circumstances which, in particular but

without limitation, if found by the Panel to be proved shall demonstrate the

Respondent's rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4b sets out circumstances which, again 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.

6.4 As stated, the circumstances set out in paragraphs 4b and 4c of the Policy

are not exclusionary. They are without limitation. That is, the Policy

expressly recognises that other circumstances can be evidence relevant

to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 First, the issue of the Complainant's rights to the name and mark JONES

APPAREL GROUP. Obviously, the individual constituents of the Complainant's mark

- namely, JONES; APPAREL; and GROUP - are not themselves sufficiently distinctive

to constitute a trademark. But, taken together and used over the past 30 years

to the extent demonstrated by the evidence [summarised in paragraph 4.1 above]

the Panel is satisfied that the Complainant succeeds in showing common law trademark

rights in the composite mark JONES APPAREL GROUP. The domain name in issue is

identical to that mark and the Complaint succeeds in establishing the first

requirement of the Policy [paragraph 4a(i)].

Rights or Legitimate Interests

6.6 In default of a Response, there is no evidence that any of the circumstances

set out in paragraph 4c of the Policy could apply in this case. There is no

evidence of actual use or demonstrable preparations by the Respondent to use

the domain name in connection with a bona fide offering of goods or services.

There is no evidence that the Respondent has been commonly known by the domain

name. Nor is there evidence of the Respondent making fair use of the domain

name without intent for commercial gain to misleadingly divert consumers or

to tarnish the Complainant's trademark. Indeed, it is difficult to see what

bona fide intent the Respondent could have had when registering the domain

name.

6.7 The Panel, therefore, finds that the Complainant has made out its case

under paragraph 4a(ii) and satisfied the second requirement of the Policy.

Registered and Used in Bad Faith

6.8. It is not necessary to repeat the factors relied upon by the Complainant

[see paragraph 5.1.4 above]. The Panel considers that they are all well made

and that, consequently, the Complaint satisfies the twin requirements of paragraph

4a(iii) of the Policy.

6.9 The Panel shares the view expressed in the Decision in Case

No. D2001-0719:

There is, I think, little question that the Respondent has been an abusive

registrant. While many things are possible, it strains credibility to suggest

that it has a legitimate interest in such a distinctive and unusual name as

<jonesapparelgroup.com>.

6.10 Re-Litigating the Complaint

Two Bites at the Cherry or One Strike?

6.10.1 Finally, the question arises as to whether this Complaint should be

denied applying the general principle that a case should not be litigated except

where certain limited conditions apply. As stated, in paragraph 5.1.1 above,

the Complaint in WIPO Case No. D2001-0719 was

denied for the Complainant's failure adequately to plead trademark rights in

the JONES APPAREL GROUP trademark.

6.10.2 What do the cases say? Those which the Panel has considered are as follows:

- Parker Hannifin Corporation .v. East

Bay Website Company [AF Case Nos. 0287 and 0587]. Here the earlier decision

rejected the Complaint for failure to allege an actual bad faith use by the

Respondent. The first decision stated that the rejection was without prejudice

to re-filing.

- Grove Broadcasting Co Ltd. v. Telesystems Communications Limited [WIPO

Case Nos. D2000-0158 and D2000-0703].

This case involved a second attempt by the Complainant to satisfy paragraph

4a(ii) of the Policy. The Panelist in the Second Case, Sir Ian Barker, referred

to paragraph 15(a) of the Rules which permits Panelists to decide a Complaint

in accordance with, inter alia, any rules and principles of law that it deems

applicable. He then applied the common law principle that, once a party

has been given a defended hearing in a Court and a decision rendered, then a

case cannot be re-litigated unless either (a) the decision is overturned on

appeal or (b) limited grounds for rehearing or reconsideration by the First

Instance Court have been established. Such limited grounds include;

- serious misconduct by a judge, juror, witness or lawyer;

- perjured evidence being offered to the Court;

- the discovery of credible and material evidence which could not have been

reasonably foreseen or known at trial; and

- a breach of natural justice / due process.

With regard to the admission of new evidence, Sir Ian referred to the English

Court of Appeal case of Ladd v. Marshall [1954], 3All ER 745 as

establishing the principle that;

- first, it must be shown that the evidence could not have been obtained with

reasonable diligence for use at trial;

- second, that the new evidence must be such that, if given, it would probably

have an important influence on the result of the case, although it need not

be decisive; and

- third, the evidence must be apparently credible, although it need not be

incontrovertible.

In the Grove Broadcasting case, the First Panelist went out of his way

to assist the Complainant when he made an order requesting further submissions,

even indicating the sort of evidence needed to prove the second criterion of

the Policy [paragraph 4a(ii)]. In the Second Complaint, the Complainant sought

to supply the information which the First Panelist had indicated was required

but which the Complainant had failed to supply. The Complainant could not bring

himself within the Ladd v. Marshall criteria, Sir Ian holding

that the evidence could with reasonable diligence have been obtained for the

First Complaint. The Second Complaint was, therefore, rejected as inadmissible.

6.10.3 Creo Products Inc .v. Website in Development [WIPO Case

Nos. D2000-0160 and D2000-1490].

Here, the First Complaint was denied for failure to meet the requirements of

paragraph 4a(iii) of the Policy. In the Second Complaint, the Complainant contended

that events and additional investigations had taken place since the First Decision

which disproved the Respondent's assertions in the First Complaint and established

the Respondent's bad faith. The Second Panelist, Andrew Christie, quoted Sir

Ina Barker's approach in the Grove Broadcasting case with approval. The

issue of whether a Complaint should be permitted to be re-filed should

… be resolved by logic, by common sense and by analogy with general principles

of law relating to re-litigation of cases.

He defined two classes of cases. First, refiled Complaints that concern

the act which formed the basis of the original Complaint. Whilst the 4 grounds

proposed by Sir Ian Barker were not exhaustive, the Panelist in the Creo

Products case considered that the categories of grounds should be limited.

Second, refiled Complaints that concern acts which have occurred subsequent

to the decision on the original Complaint. What Andrew Christie termed as

…truly a new action under the Uniform Policy.

He then set out general principles which he considered should be applied, on

a case-by-case basis, when determining the admissibility of a refiled Complaint,

be it of the first or second class. They were:

- First, the burden of establishing that the refiled Complaint

should be entertained under the Uniform Policy rests on the refiling Complainant.

- Secondly, that burden is high.

- Thirdly, the grounds which allegedly justify entertaining the

refiled Complaint should be clearly identified by the refiling Complainant.

- Fourthly, the dispute resolution service provider with whom

the refiled Complaint has been filed has responsibility for determining if,

prima facie, the refiling Complainant has pleaded grounds which might

justify entertaining the refiled Complaint.

- Fifthly, where the dispute resolution service provider determines

that, prima facie, the refiling Complainant has pleaded grounds which

might justify entertaining the refiled Complaint, the refiled Complaint should

be submitted to an administrative panel for determination of whether the refiled

Complaint should be entertained (and, if so, of the merits of the claim under

the Uniform Policy).

In the Creo Products case, the Panel found that the refiled Complaint

should be admitted because it was based both on new evidence in relation to

the acts which formed the basis of the first Complaint and on acts which had

occurred subsequently.

6.10.4 Furrytails Ltd. .v. Andrew Mitchell [NAF Case No. 96532]

(First Complaint) and [WIPO Case No. D2001-0857]

(Second Complaint). The three-member Panel, which included Philip Argy who decided

the first Creo Products case and Andrew Christie who decided the refiled

Creo Products case, applied the approach taken in the latter decision

and that of Sir Ian Barker in the Grove Broadcasting case. On the facts,

the Complainant's second bite at the cherry in Furrytails was not admitted,

the Panel finding that the refiled Complaint was merely based upon subsequent

acts which were either a repetition of, or substantially the same as, the acts

on which the First Complaint was based.

6.10.5 Talal Abu-Ghazaleh International & Others .v. Fadi Mahassel

[WIPO Case Nos. D2000-1479 and

D2001-0907]. The Panelist, Prof. William Cornish,

referred to and approved the principles laid down in Grove Broadcasting

and Creo Products cases but held that this dispute was not, on the facts,

a refiled Complaint of the types confronted on those cases.

6.10.6 How then should this Complaint be treated? First, it does not

fall fair and square into any of the four limited grounds set out in Grove

Broadcasting. Second, that is not the end of the matter since those

grounds were not advanced as exhaustive. Third, on its facts this case

falls into the category - identified by Andrew Christie in Creo Products

- where the Panel considers that the Complainant has not proved that the First

Complaint satisfies all the requirements of the Policy but that it is

highly likely the Complainant could do so upon the submission of further arguments

and/or evidence. In such a situation, Mr. Christie proposes that, rather than

dismissing the First Complaint without prejudice as in the Parker

Hannifin case - with which he disagreed - the better approach is to use

Rule 12 and for the Panel to request further statements or documents from either

or both of the parties.

6.10.7 But, that is not what happened in this case. However, in dismissing

the First Complaint in this case under paragraph 4a(i) of the Policy, the Panelist

made it abundantly clear that he felt the equities lay strongly with the Complainant,

there being, in his mind,

…little question that the Respondent has been an abusive registrant.

Here, there is absolutely no prejudice to the Respondent in allowing this Second

Complaint.

The Respondent has failed to submit a Response either to the First Complaint

or to this Second Complaint. This is not a question of the Complainant refiling

the Complaint in the hope of finding a more sympathetic Panel as in the Furrytails

case. It is concerned with correcting an inadequately pleaded case in the First

Complaint so as to establish the Complainant's trademark rights in the JONES

APPAREL GROUP trademark. The Panelist in the First Complaint did not suggest

the Complainant submit additional evidence pursuant to Rule 12. Instead, he

gave the green light in the clearest possible way to refiling the Complaint

to correct the omissions in the First Complaint.

6.10.8 Therefore, without seeking to establish a fifth ground for overcoming

the res judicata barrier, the Panel in this case admits the refiled Complaint

in circumstances where;

- the First Complaint failed for want of evidence

that the Complainant could and should have properly submitted in relation to

the threshold requirement of establishing trademark rights;

- the Panelist in the First Complaint did

not invite the Complainant to rectify that omission under Rule 12;

- but at the same time indicated that but

for that omission he would have found against a clearly abusive Respondent;

and

- the Respondent fails to respond either to

the First Complaint or to the refiled Second Complaint.

Although this does not satisfy Mr. Christie's requirement of being "… truly

a new action", it is nevertheless clearly within the common sense approach

he advocates to cases of this nature. The additional detective work set out

in the Supplemental Complaint with the refiled Complaint only serves to emphasise

the bad faith of the Respondent. Further, this Decision does not facilitate

forum shopping of the Furrytails type which this Panel agrees

should not be permitted.

7. Decision

For all the foregoing reasons, the Panel decides that the Complainant has proved

each of the three elements of paragraph 4a of the Policy. Accordingly, the Panel

requires that the domain name <jonesapparelgroup.com> be transferred to

the Complainant.

David Perkins

Sole Panelist

Dated: October 16, 2001

More cases by this complainant

• Jones Apparel Group, Inc. v. Robin Sousa — D2001-1308 · evanpicone.com · Transfer · 21 Dec 2001
• Jones Apparel Group, Inc. v. Jones Apparel Group.com — D2001-0719 · jonesapparelgroup.com · Complaint denied · 19 Jul 2001
• Jones Apparel Group, Inc. — D2000-1231 · Terminated

Other cases for this domain

• Jones Apparel Group, Inc. v. Jones Apparel Group.com — D2001-0719 · jonesapparelgroup.com · Complaint denied · 19 Jul 2001