JA Apparel Corporation (⦣8364;œJA⦣8364;) v. Inova Research Group, Inc.; Kenneth Choi, d.b.a. Inova Research Group, Inc.

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.

7. Decision

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

Sole Panelist

Dated: October 8, 2002