## Facts

- J. Crew International, Inc. marketed and sold clothing and related retail services under the marks J. CREW and CREW and held U.S. trademark registrations for those marks.
- Respondent registered the domain name `<crew.com>` on July 12, 1998; the record reflected an association with Telepathy, Inc., which used the same contact address and was identified as an alter ego.
- Respondent also created a related sub-account/subdomain `<j.crew.com>` linked to the same registration.
- Neither `<crew.com>` nor the related subdomain was developed into an active website at the time of the proceeding.
- Respondent maintained a portfolio of domain names that included names resembling J. Crew’s trademarks (including a J. Crew-related domain).
- Before the UDRP filing, J. Crew (i) invited Respondent into an affiliate program, (ii) later offered to purchase certain domain names, which Respondent declined, and (iii) ultimately terminated Respondent from the affiliate program.
- J. Crew filed a UDRP complaint with WIPO seeking transfer of `<crew.com>`; a three-member panel was appointed, and the matter was decided by a 2–1 vote with a dissent.

## Issues

1. Whether `<crew.com>` is identical or confusingly similar to a trademark or service mark in which J. Crew has rights under UDRP ¶ 4(a)(i).
2. Whether Respondent has rights or legitimate interests in `<crew.com>` under UDRP ¶ 4(a)(ii) and ¶ 4(c).
3. Whether `<crew.com>` was registered and is being used in bad faith under UDRP ¶ 4(a)(iii) and ¶ 4(b), including whether passive holding can satisfy “use” in bad faith.

## Decision

- The panel majority ordered transfer of `<crew.com>` to J. Crew.
- The majority found `<crew.com>` identical or confusingly similar to J. Crew’s CREW mark.
- The majority found Respondent lacked rights or legitimate interests in the domain name.
- The majority found the domain name was registered and used in bad faith, relying in part on passive holding and evidence suggesting targeting of J. Crew’s marks.
- One panelist dissented, emphasizing the dictionary nature of “crew” and expressing concern that the record did not adequately show bad faith.

## Legal Principles

- Under the UDRP, a complainant must prove confusing similarity, lack of respondent rights or legitimate interests, and bad-faith registration and use.
- A domain name that incorporates a complainant’s mark in its entirety is generally confusingly similar; the “.com” gTLD does not distinguish the domain name from the mark.
- Mere registration of a dictionary word does not automatically establish a legitimate interest; the respondent must show evidence fitting UDRP ¶ 4(c), such as bona fide use or demonstrable preparations to use, being commonly known by the name, or legitimate noncommercial/fair use.
- Passive holding may constitute bad-faith “use” when surrounding circumstances support an inference that the respondent registered the domain to exploit the complainant’s mark (including knowledge of the mark, absence of plausible independent use, and conduct indicating targeting).
- Evidence of mark-targeting may include acquisition patterns, creation of mark-referencing related domains/subdomains, and conduct suggesting an intent to retain leverage over a mark owner seeking the domain.

## Conclusion

The panel majority applied the UDRP to order transfer of `<crew.com>`, holding that J. Crew proved confusing similarity to its CREW mark, Respondent’s lack of legitimate interests, and bad-faith registration and use supported by circumstances including passive holding and indications that the registration targeted J. Crew’s branding.


J. Crew Int’l, Inc. v. crew.com, WIPO Case No. D2000-0054 (2000)