Kimsaprincess Inc. v. Michael Bavas
Claim Number: FA2009001911318
Complainant is Kimsaprincess Inc. (“Complainant”), represented by Peter Wakiyama, United States. Respondent is Michael Bavas (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kkwskincare.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 4, 2020; the Forum received payment on September 4, 2020.
On September 8, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kkwskincare.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kkwskincare.com. Also on September 10, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 10, 2020.
On September 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a well-known celebrity based company that sells self-branded skin and beauty products. Complainant has rights in the KKW mark through its registration with the United States Patent and Trademark Office.
Respondent’s <kkwskincare.com> domain name is identical or confusingly similar to Complainant’s KKW mark, as it incorporates the mark entirely and adds the word “skincare” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <kkwskincare.com> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not granted Respondent permission to use the KKW mark in its domain name. Respondent does not use the at-issue domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to divert internet users to a resolving website, which offers the domain name for sale via a broker and hosts parked links related to and/or competitng with Complainant’s business.
Respondent registered the <kkwskincare.com> domain name bad faith. Respondent registered the at-issue domain name with intent to sell. Respondent also attempts to attract internet users for commercial gain to the disputed domain name’s resolving website, which hosts parked pay-per-click links. Respondent registered the disputed domain name with opportunistic bad faith by registering the domain name right after Complainant announced a new skincare line. Finally, Respondent registered the dispute domain name with actual knowledge of Complainant’s rights in the KKW mark.
B. Respondent
Respondent contends as follows:
Respondent argues that it is no longer the owner of the at-issue domain name, and that “no activities or profits resulted in ownership.” Respondent claims it did not renew the disputed domain names, and that Respondent did nothing with the domain names during ownership.
Complainant has rights in the KKW mark.
Complainant’s rights in the KKW mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s <kkwskincare.com> domain name addresses a website where the domain name is offered for sale and where Respondent hosts pay-per-click links some of which compete with product offerings from Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the KKW mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The at-issue domain name consists of Complainant’s entire KKW trademark followed by the descriptive term “skincare,” all followed by the top level domain name “.com.” The differences between the at-issue <kkwskincare.com> domain name and Complainant’s KKW trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) that Respondent’s <kkwskincare.com>domain name is confusingly similar to Complainant’s KKW trademark See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the <kkwskincare.com>domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Michael Bavas.” The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <kkwskincare.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore and as discussed below regarding bad faith, Respondent is attempting to trade on Complainant’s trademark to divert internet users looking for Complainant to a website controlled by Respondent. Respondent’s website offers the domain name for sale and displays pay-per-click links to third parties some offering products that compete with those offered by Complainant. Respondent’s use of the domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <kkwskincare.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present and permit the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent offers the at-issue domain name for sale via an advertisement on the website addressed by Respondent’s <kkwskincare.com> domain name. Registration of a confusingly similar domain name with intent to sell is evidence of bad faith under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”).
Second, and as mentioned above regarding rights and legitimate interests, Respondent’s at-issue domain name addresses a website displaying links to third parties. Respondent is likely to financially benefit from such links via a pay-per-click arrangement or otherwise. Such circumstances indicate Respondent’s bad faith registration and use of the <kkwskincare.com> domain name pursuant to Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Next, Respondent registered the at-issue domain name in advance of Complainant’s launch of a new product line. Doing so evidences opportunistic bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. harshit dhingaun, FA1505001619696 (Forum June 10, 2015) (holding that the respondent had demonstrated opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the <amazonfashionindia.com> and <amazonindiafashion.com> domain names within days after the announcement of the complainant’s sponsorship of India Fashion Week).
Finally, Respondent registered <kkwskincare.com> knowing that Complainant had trademark rights in the KKW trademark. Respondent’s prior knowledge is evident from the mark’s notoriety, from the inclusion of a term suggestive of Complainant’s products within the at-issue domain name, from the <kkwskincare.com> website’s display of links to Complainant’s competition, and from Respondent’s opportunistic registration of the domain name to follow a new product line introduction by Complainant. See Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). It follows that Respondent intentionally registered the at-issue domain name so that it might improperly exploit the domain name’s trademark value rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <kkwskincare.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kkwskincare.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 16, 2020
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