WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jones & Vining, Incorporated v. Zhongshan Jiewei Shoes Co., Ltd.

Case No. D2012-2507

1. The Parties

The Complainant is Jones & Vining, Incorporated of Brockton, Massachusetts, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.

The Respondent is Zhongshan Jiewei Shoes Co., Ltd. of Zhongshan, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <jonesviningchina.com> is registered with 35 Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2012. On December 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 28, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On December 28, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 8, 2013.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2013.

The Center appointed Jonathan Agmon as the sole panelist in this matter on February 6, 2013. 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.

4. Factual Background

The Complainant, Jones & Vining, Inc, is an American company established in 1930 whose business consists of manufacturing and supplying products within the shoe component field such as: shoe lasts, which are foot shaped forms used to mold shoe, soles, shoe upper patterns, outsoles and insoles.

The Complainant has a reputation of being one of the most successful developers and suppliers of lasts and footwear components worldwide. The Complainant’s products are used by the biggest names in the footwear industry such as Nike, Adidas, Reebok and New Balance.

The Complainant engages in substantial advertising and promotion and has numerous factories and sales offices around the world, including in China.

The Complainant has annual worldwide sales of approximately USD 18-20 million.

The Complainant is the owner of the following registered trademarks: Chinese trademark registration No. 1169570, with the registration date of April 21, 1998 – JONES & VINING; United States trademark registration No. 2223840, with registration date of February 16, 1999 – JONES & VINING.

The Complainant has used the JONES & VINING name and mark since 1930.

The Complainant’s official website located at “www.jonesandvining.com”. The domain name of this official website was registered by the Complainant on January 12, 2000.

The Complainant opened its first factory in China in 2003 to manufacture high quality outsoles and insoles. In 2005 the Complainant opened a factory in China to manufacture lasts. In 2007, the Complainant entered into a business relationship with the Respondent for the operation of a new injection molding factory in ZhongShan, China to produce JONES & VINING branded molded outsoles and insoles for the Complainant’s global footwear customers.

In 2011 a dispute arose between the Complainant and the Respondent regarding the operation of the JONES & VINING factory in ZhongShan, China. As a result of the dispute the parties terminated their relationship, including any limited rights the Respondent may have had to use the name and mark JONES & VINING.

The disputed domain name <jonesviningchina.com> was registered on August 16, 2006, before any business relationship existed between the Complainant and the Respondent and without the consent of the Complainant.

The disputed domain name <jonesviningchina.com> does not resolve to an active website.

The Respondent is a competing manufacturer of footwear and shoe related components as well as a former manufacturer for the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s JONES & VINING name and trademark, in which the complainant has rights, seeing that the disputed domain name encompasses the entire distinctive part of the JONES & VINING trademark and trade name.

The Complainant further argues that the addition of the geographically descriptive term “China” is not a distinguishing element and is insufficient to avoid confusing similarity between the JONES & VINING trademark and the disputed domain name.

The Complainant further argues that the addition of the geographical term “China”, is actually likely to increase the confusion, as the Complainant’s products are manufactured in China. The Complainant further argues that using the trade name and trademark JONES & VINING along with the geographic location where such mark is used, in this case, China, is the type of improper domain name use that will suggest to consumers that such domain name is “official” or otherwise sponsored or endorsed by the trademark owner.

The Complainant further argues that the Respondent has no rights or legitimate interests with respect to the JONES & VINING mark or the disputed domain name.

The Complain further argues it had not authorized, licensed or otherwise permitted the Respondent to apply for or use any domain name comprising or incorporating the JONES & VINING mark or any confusingly variation thereof.

The Complainant further argues that the Respondent has been passively holding the disputed domain name and that passive holding of a domain name does not constitute “legitimate non-commercial or fair use” .

The Complainant further argues that it had a prior business relationship with the Respondent who manufactures the same products in competition with the Complainant. This relationship between the parties was terminated in May 2011. The Respondent was not authorized to use the JONES & VINING trade name and trademark in any manner after the termination of the relationship.

The Complainant further argues that the Respondent’s continued use of the disputed domain name after the termination of the parties’ business relationship is deemed bad faith.

The Complainant further argues that the Respondent is using the disputed domain name in bad faith even though such domain name does not resolve to an active website. Passive holding of a domain name in the manner practiced by the Respondent is sufficient to form the basis for bad faith registration and use of such domain name.

The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.

The Complainant further argues that the Respondent uses the […]@jonesviningchina.com email address to deceive the Complainant’s customers into believing they are doing business with the Complainant, thus diverting business away from the Complainant. Impersonation of the Complainant via an email address incorporating the Complainant’s trademark has been found by previous UDRP panels to constitute bad faith.

The Complainant further argues that the Respondent, as a former business supplier, had actual knowledge of the Complainant’s name and mark when it registered the disputed domain name just prior to entering into a business relationship with the Complainant. Registration of a domain name that infringes on the Complainant’s rights, despite actual knowledge of the Complainant’s mark, is evidence of bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant is the owner of the following trademark registrations: Chinese trademark registration No. 1169570, with the registration date of April 21, 1998 – JONES & VINING; United States trademark registration No. 2223840, with registration date of February 16, 1999 – JONES & VINING.

The disputed domain name <jonesviningchina.com> differs from the registered JONES & VINING trademark by the additional geographical term “China” and the deleting of the conjunction “&” from the JONES & VINING name and trademark.

The Panel finds that the disputed domain name <jonesviningchina.com> integrates the Complainant’s entire distinctive JONES & VINING trademark as a dominant element: “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (RedBull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909). See also: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

The additional geographical term “China” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s JONES & VINING trademark, as “China” is a country in which the Complainant’s products are manufactured. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “the mere addition of geographic identifier does not render the distinctive trademark such as BLOOMBERG diminished…” (Bloomberg L.P v. Sein M.D., NAF Claim No. FA101000096487, March 5, 2001). See also: “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red BullGmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

Also, the deleting of the non-distinctive word “and” from the mark in the disputed domain name cannot avoid confusing similarity with the Complainant’s mark (See Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller, WIPO Case No. D2006-0536).

Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.1.

In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the JONES & VINING trademark, or a variation thereof.

The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case. There does not appear under the circumstances any other basis for this Panel to determine that the Respondent has rights or legitimate interests in the disputed domain name, noting the absence of an active website at the disputed domain name.

Accordingly, on the basis of the available evidence, the Panel finds on balance that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark JONES & VINING (since the year 1930) and long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the JONES & VINING trademark since at least the year 1997. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, it has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online locations to which the disputed domain name resolves, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolves.

The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Incv. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Respondent’s continued use of the disputed domain name after the termination of the business relationship with the Complainant is an evidence of bad faith (see C.& A. Veltins GmbH & Co. KG v. Heller Highwater Inc., WIPO Case No. D2004-0466).

The disputed domain name does not resolve to an active website. The Respondent’s passive holding of the disputed domain name also indicates bad faith registration and use of the disputed domain name: “The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept” (See Cho Yong Pil v. Kee Dooseok, WIPO Case No. D2000-0754). See also: “The significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith” (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Another indication for the Respondent’s bad faith is raised from the Respondent’s using of the email address: […]@jonesviningchina.com. The using of this email address by the Respondent can cause costumers to believe they are doing business with the Complainant (See Graybar Services Inc v. Graybar Elec, Graberinc Lawrenge, WIPO Case No. D2009-1017; Demco, Inc. v. Adminprivateregcontact aka Demco USA, WIPO Case No. D2011-1516).

In view of the former business relationship between the parties, it is clear evidence that the Respondent registered the disputed domain name with knowledge of the Complainant’s name and trademark. The Respondent’s actions thereof constitute bad faith: “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith” (Herbalife International, Inc v. Surinder S. Farmaha, WIPO Case No. D2005-0765). Further, the Complainant contends, and the Respondent has not denied, that the registration of the disputed domain name occurred without the authorization of the Complainant and prior to the consummation of a business relationship between the parties.

Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the Respondent’s using of the disputed domain name after the termination of the business relationship between the parties, the Respondent’s passive holding of the disputed domain name and the using of the email address, the Panel draws the inference that on balance the disputed domain name was both registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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

Jonathan Agmon
Sole Panelist
Date: February 16, 2013