UDRP complaint for stjohncn.com denied at NAF – Respondent defaults but legal counsel fails to provide any evidence

Complainant was St. John Knits, Inc. from California, USA. Respondent was wang songxu from China.

Complainant submitted the Complaint to the National Arbitration Forum on September 4, 2012. The National Arbitration Forum appointed James A. Carmody, Esq. as Panelist.

Respondent registered the disputed domain name, stjohncn.com, on April 20, 2012.

Complainant St. John Knits, Inc. manufactures and distributes women’s clothing and accessories to countries around the world to sell in boutiques and department stores under the ST. JOHN trademark since 1962. Complainant owns trademark registrations for its ST. JOHNS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,124,122 registered October 26, 1982), as well as with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 3,230,951 registered January 21, 2004).

Respondent failed to submit a Response in this proceeding.

The Panel found in favor of the Complainant in the first element of the UDRP: Identical and/or Confusingly Similar. Panel said that Complainant has secured trademark rights in its ST. JOHN mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO as well as the SAIC. The Panel concluded that the stjohncn.com domain name was confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i) by the additions of a country code abbreviation (.cn) and a gTLD (.com) and removal of the punctuation(.) and the space in the mark.

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.

Complainant claimed that Respondent lacks rights or legitimate interests in the stjohncn.com domain name because Respondent failed to make a legitimate noncommercial or fair use of the domain name. Complainant asserted that Respondent improperly diverts consumers to its website by taking advantage of the goodwill associated with Complainant’s mark. However, Complainant did not provide evidence of Respondent’s use of the disputed domain name and did not describe Respondent’s use of the domain name in its Complaint. Based upon the evidence put forward in the Complaint, there was no way for the Panel to determine whether Respondent’s use of the stjohncn.com domain name capitalizes on the reputation associated with Complainant’s ST. JOHN mark.

The Panel had no basis to conclude that Respondent did not use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). The Panel found that Complainant’s lack of evidence and arguments relating to Respondent’s use of the disputed domain name were sufficient grounds for the Panel to find that Complainant has not submitted a prima facie case in support of its allegations.

So the Panel found that Policy ¶ 4(a)(ii) was not established.

Panel didn’t address the third element of the UDRP that requires Complainant to prove that Respondent both registered and is using the disputed domain name in bad faith.

The Panel concluded that relief shall be DENIED.