J. C. Penney Corporation, Inc. v. Kiansu Thoi

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

J. C. Penney Corporation, Inc. v. Kiansu Thoi

Case No. D2007-0133

1. The Parties

Complainant is J. C. Penney Corporation, Inc., Dallas, Texas, United States of America, represented by Kayla Carter Owen, United States of America.

Respondent is Kiansu Thoi, Hanoi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <jcpenneys.com> is registered with DSTR Acquisition

VII, LLC d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2007. On February 1, 2007, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On February 1, 2007, DSTR Acquisition VII, LLC d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing contact details. Hardcopies of the Complaint were received by the Center on February 26, 2007. The Center verified that the Complaint satisfied 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2007. Respondent did not submit any response. Accordingly, the Center notified t Respondent’s default on March 22, 2007.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on April 10, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The language of the proceeding is English.

4. Factual Background

Complainant holds rights in the trademark JCPENNEY as respectively shown by US registration N. 949,595 of January 2, 1973 and US registration N. 2,437,229 of March 20, 2001.

Complainant is also the registrant of the domain name <jcpenney.com> registered on October 13, 1993.

Respondent registered the disputed domain name, <jcpenneys.com>

on August 5, 2002.

5. Parties’ Contentions

Complainant

Complainant submits that:

The disputed domain name is confusingly similar to trademarks or service marks in which the Complainant has rights;

The confusing similarity of Respondents’ domain name stems from the fact that plurals or possessives, as in “JCPenneys” or “JCPenney’s” are often used when referring to the Complainant, and easily confused, mistakenly transposed, omitted or misspelled by persons attempting to access the JCPenney domain. Moreover, Respondent’s domain name is a phonetic equivalent or derivative of <jcpenney.com>;

Complainant’s trademark rights are derived from a retail store business that is comprised of more than 1000 JCPenney retail stores located nationwide. J. C. Penney Corporation, Inc., the wholly-owned operating subsidiary of J. C. Penney Company, Inc., is one of America’s largest department store, catalog, and e-commerce retailers. JCPenney Catalog, including e-commerce, is the nation’s largest catalog merchant of general merchandise, and “www.JCPenney.com” is one of the largest apparel and home furnishings sites on the Internet. In connection with its retail operations JCPenney also maintains a website, “www.jcpenney.com”, through which it also sells retail products;

Respondent has no right or legitimate interests in the disputed domain name, and he is not commonly known under the name “JCPenneys.com”;

There is no evidence of any Respondent’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;

Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain by misleadingly diverting consumers;

Respondent registered and uses the disputed domain name in bad faith;

By using the domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to another on-line location, by creating a likelihood of confusion with Complainant’s mark;

As of August 5, 2002, accessing jcpenneys.com the user is transferred to the site “www.sedoparking.com”. The “www.sedoparking.com” web site is used to redirect Internet users to sites that sell goods and services that directly compete with goods and services sold on the “www.jcpenney.com” site; and Complainant requests that the Panel appointed in this administrative proceeding issue a decision that the contested domain name be transferred to the Complainant.

B. Respondent

Respondent was duly notified

of the administrative proceedings as stipulated under paragraph 2(a) of the

Rules but did not reply to Complainant’s contentions.

6. Discussion and Findings

Since Respondent has not submitted a response, the Panel decides this dispute on the basis of the Complaint, in accordance with the Rules, paragraph 5 (e).

A. Identical or Confusingly Similar

Complainant has established that it has prior rights in the trademark JCPENNEY registered in several classes for many products and services.

The disputed domain name is virtually identical as to sight, sound, and meaning

when compared to Complainant’s trademark. The domain name differs from

Complainant’s trademark in an insignificant way that does not distinguish

the domain name from Complainant’s mark and that appears calculated to

take advantage of Internet users’ typing errors. Therefore, the Panel

finds that the disputed domain name is confusingly similar to Complainant’s

mark.

B. Rights or Legitimate Interests

Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

a) that before any notice to the respondent of the dispute, he or she used

or made 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

b) that the respondent is commonly known by the domain name, even if he or

she has not acquired any trademark rights; or

c) that the respondent

intends to make a legitimate, non-commercial or fair use of the domain name

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark.

In the present default

proceeding there is no contention on record, or made by Respondent, that the

Panel could rely on, to conclude that Respondent might have trademark or other

intellectual property rights, or in general, rights or legitimate interests

in the domain name. In fact, Respondent has no connection or affiliation with

Complainant, which has not licensed or otherwise authorised Respondent to use

or apply for any domain name incorporating Complainant’s trademarks. Respondent

has not alleged any facts or elements to justify prior rights and/or legitimate

interests in the disputed domain name. Respondent does not appear to make any

legitimate use of the domain name for non-commercial activities. On the contrary,

from Complainant’s evidence, confirmed by the Panel’s review of

Respondent’s website, it appears that the Respondent is, for his own commercial

gain, diverting Internet users looking for Complainant’s services to the

websites associated with the disputed domain name. Such use cannot be considered

bona fide.

Therefore, the Panel considers that there is no evidence that Respondent has

done anything that could be regarded as giving rise to a right or legitimate

interest under paragraph 4(c).

Accordingly, the Panel

finds that the Complainant has satisfied the burden of proof with respect to

paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, 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 the domain name in bad faith:

i) circumstances indicating that the holder has

registered or has 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 the holder’s documented

out-of-pocket costs directly related to the domain name; or

ii) the holder has 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 the holder has engaged

in a pattern of such conduct; or

iii) the holder has registered the domain name primarily

for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, the holder has intentionally

attempted to attract, for commercial gain, Internet users to the holder’s

web site or other online location, by creating a likelihood of confusion with

the Complainant’s mark as to the source, sponsorship, affiliation, or

endorsement of the holder’s web site or location or of a product or service

on the holder’s web site or location.

Accordingly, for Complainant

to succeed, the Panel must be satisfied that the domain name has been registered

and is being used in bad faith.

Complainant has argued

that Respondent registered the domain name and used the same for redirecting

traffic to unrelated websites. The Panel finds that from the records it appears

that Respondent has registered and used the domain name with the sole purpose

of attracting Internet users for commercial gain and diverting them to unrelated

websites where goods and services competing with those of the Complainant are

offered.

The Panel finds that the use of the disputed domain name to divert Internet users to a web site of a Complainant’s competitor (be it the Respondent’s web site or that of a third party), is evidence of bad faith use of the disputed domain name.

Indeed, by deflecting users, the Respondent has shown bad faith use of the domain name that clearly falls within the example given in article 4(a)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”.

In this sense AltaVista Company v. Saeid Yomtobian WIPO Case No. D2000-0937 where the Panel found that: “the use of misspellings alone is sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by making a likelihood of confusion with the Complainant’s mark. Respondent’s bad faith is further demonstrated by his offering of competing search engine services at the diverted sites.”

In addition, considering

the following non contested facts, i.e.: 1) that Complainant’s

trademark was first used in 1971 and subsequently registered in 1973; 2) that

Complainant operates a retail store business that is comprised of more than

1000 JCPenney retail stores located nationwide; 3) that

J. C. Penney Corporation, Inc., the wholly-owned operating subsidiary of J.

C. Penney Company, Inc., is one of America’s largest department store,

catalog, and e-commerce retailers. JCPenney Catalog, including e-commerce, is

the nation’s largest catalog merchant of general merchandise, 4) that

“www.JCPenney.com” is one of the largest apparel and home furnishings

sites on the Internet. In connection with its retail operations JCPenney in

fact maintains a website, “www.jcpenney.com”, through which it also

sells retail products, and 5) that Complainant registered its domain name <jcpenney.com>

on October 13, 1993, it is likely that Respondent

knew of Complainant’s business, trademark and domain name.

Finally, Respondent has

not denied Complainant’s assertions of bad faith, has not given any justification

for the registration of the disputed domain name nor substantiated or at least

alleged any concurrent right or legitimate interest to the disputed domain name.

Considering the foregoing,

the Panel concludes that Respondent registered and is using the disputed domain

name in bad faith and that the requirements of paragraph 4 (a)(iii) of the Policy

are satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <jcpenneys.com> be transferred to the Complainant.

Fabrizio Bedarida

Sole Panelist

Dated: April 24, 2007