Sister Sister LLC and James Charles Dickinson p/k/a James Charles v. TUNG LAM
Claim Number: FA2101001928569
Complainant is Sister Sister LLC and James Charles Dickinson p/k/a James Charles (“Complainant”), represented by Jennette W. Psihoules, California, USA. Respondent is TUNG LAM (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sisters-apparel.us>, registered with NameCheap, Inc.
The undersigned certifies that he has 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 January 15, 2021; the Forum received payment on January 16, 2021.
On January 18, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <sisters-apparel.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2021 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@sisters-apparel.us. Also on January 18, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2021, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant sells merchandise associated with beauty YouTuber and make-up artist James Charles.
Complainant has common law rights in the SISTERS mark based on use of the mark in commerce.
Respondent’s <sisters-apparel.us> domain name is confusingly similar to Complainant’s mark because it merely adds the generic term “apparel” and the “.us” county code top-level domain (“ccTLD”) to the SISTERS mark.
Respondent lacks rights and legitimate interests in the <sisters-apparel.us> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not authorized or permitted Respondent to use the SISTERS mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass itself off as Complainant and to sell unauthorized competing products.
Respondent registered and uses the <sisters-apparel.us> domain name in bad faith. Respondent uses the at-issue domain name to pass itself off as Complainant and sell competing counterfeit goods. Additionally, Respondent has actual knowledge of Complainant’s rights in the SISTERS mark based on the fame of the mark and Respondent’s efforts to sell unauthorized versions of Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant no trademark rights in SISTERS.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two named Complainants in this matter are Sister Sister LLC and James Charles Dickinson pka James Charles. These parties allege that they each have common law trademark rights in the SISTER mark. Respondent fails to object to the two parties proceeding as a single Complainant. The Panel therefore finds that the two Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of herein such that they may be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
Complainant holds no trademark registration for the SISTERS mark. However, there is no requirement under the UDRP that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”).
Without the benefit of a national registration for the SISTERS mark, the initial issue for the Panel under Policy ¶4(a)(i) is whether or not Complainant presents sufficient evidence of secondary meaning to demonstrate that Complainant enjoys common law trademark rights in a relevant mark. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Complainant claims that James Charles calls his fans “sisters,” which may well be true. But, there is no evidence in the record showing that SISTERS, an otherwise generic and descriptive term, has been associated with particular goods or services in the minds of consumers such that it identifies the source of Complainant’s particular products or services. Such evidence might include Complainant’s public use of the SISTERS mark over a period of years or Complainant’s advertising expenditures in promoting the mark in commerce. Here, Complainant merely asserts that the SISTERS term has been used since 2015 by James Charles to address his followers. Even if the use of the term was somehow a trademark use, five years is not particularly long and the USPTO’s Trademark Manual of Examining Procedures (“TMEP”) cites cases where 18 years and 16 years were respectively found inconsequential to show acquired distinctiveness (secondary meaning). See TMEP at 1212.06(a). Additionally, Complainant, which seems to be a sophisticated enterprise or group of enterprises, has not yet applied for a trademark registration regarding SISTERS. There is thus an implication from Complainant’s failure to apply for registration during the mark’s five or so years of claimed use that Complainant believed, or was advised, that an attempt to register the mark might fail.
Complainant has a most formidable burden of proving common law trademark rights where, such as here, a claimed trademark is descriptive. See TimeWorks, LLC v. Shadwan Swed, FA1519030 (Forum Oct. 15, 2013) (stating “where the claimed mark is comprised of descriptive or dictionary words, Complainant has a greater onus to present compelling evidence of secondary meaning or distinctiveness.”) But here Complainant fails to produce even a modicum of evidence in support of its claim of common law trademark rights in SISTERS. Therefore in light of the foregoing, the Panel finds that Complainant has failed to offer sufficient evidence of having rights in the SISTERS mark, or any other mark and thus fails to demonstrates it has the requisite “rights in a mark” to prevail under Policy ¶ 4(a)(i).
Having found that Complainant lacks rights in the SISTERS mark for the purposes of the Policy, the Panel declines to analyze Respondent’s rights or legitimate interests, or bad faith regarding the at-issue domain name. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the usTLD Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sisters-apparel.us> domain name REMAIN WITH Respondent.
Paul M. DeCicco, Panelist
Dated: February 15, 2021
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