DECISION

 

Lan Sun v. Emyja Witcher

Claim Number: FA2107001957411

 

PARTIES

Complainant is Lan Sun (“Complainant”), represented by C. Brandon Browning, Alabama, USA.  Respondent is Emyja Witcher (“Respondent”), Ohio, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lanjaenickestore.us>, registered with Dynadot, LLC.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 29, 2021; the Forum received payment on July 29, 2021.

 

On July 30, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <lanjaenickestore.us> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 August 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@lanjaenickestore.us. Also on August 2, 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 August 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist (the "Panel").

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in LAN JAENICKE and submits that the domain name is confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business and has since used the domain in bad faith.

 

B.   Respondent

Respondent failed to submit a Response in this proceeding. 

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant designs and sells fashion clothing by reference to the trademark, LAN JAENICKE, which is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 3,975,405, from June 7, 2011;

 

2.    there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating that trademark; and

 

3.    the disputed domain name was registered on July 2, 2021 and has since used it to resolve to a website which purports to sell clothing and fashion accessories, prominently showing use of Complainant’s trademark.

 

DISCUSSION

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 has drawn 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.[i]

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii].  Complainant provides evidence of its USPTO registration for the trademark and so the Panel finds that Complainant has rights in that mark.

 

The disputed domain name incorporates Complainant’s trademark in its entirety and adds the descriptive word “store”, along with the “.us” ccTLD.  Neither of those additions carries any distinctive value and the trademark remains the recognizable part of the disputed domain name.  It follows that the Panel finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[iii].

 

Accordingly, Complainant has satisfied the first element of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i)            you are the owner or beneficiary of a trade or service mark that is identical to the domain name; 

(ii)          before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; 

(iii)         you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or 

(iv)         you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].

 

The publicly available WhoIs information identifies the holder of the disputed domain name as “Emyja Witcher”.  That name does not provide any prima facie evidence that Respondent might be known by the disputed domain name.  There is nothing else to suggest that Respondent is commonly known by the domain name and there is no evidence it has trademark rights of its own. 

 

Complainant provides screenshots of the resolving webpage which purports to sell clothing and fashion accessories, and which prominently shows Complainant’s  trademark.  Complainant states that Respondent not authorized to use its trademark and there is nothing in the evidence to contradict that assertion.  The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name since the use is not a bona fide offering of goods or services or legitimate noncommercial or fair use under the Policy[v].

 

The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted.  The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.

 

Registration or Use in Bad Faith

Complainant must prove on the balance of probabilities either that the disputed domain name was registered in bad faith or was used in bad faith.  For the purposes of the usTLD, the following non-limiting circumstances are taken to be evidence of the registration or use of a domain name in bad faith:  

 

(i)            circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; 

(ii)          you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; 

(iii)         you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or 

(iv)         by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

The Panel finds that subparagraph (iv) above has direct application.  The Panel has already found the disputed domain name to be confusingly similar to the trademark. The Panel finds that Respondent has intentionally used the domain name to attract, for commercial gain, Internet users to the resolving website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website. 

 

The Panel finds registration or use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy[vi].

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <lanjaenickestore.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Date: September 7, 2021