Alex and Ani, LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1512001651702
Complainant is Alex and Ani, LLC (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aaoutlet.com> and <aaoutlets.com>, registered with TLD Registrar Solutions Ltd..
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically December 9, 2015; the Forum received payment December 9, 2015.
On December 10, 2015, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <aaoutlet.com> and <aaoutlets.com> domain names are registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the names. TLD Registrar Solutions Ltd. verified that Respondent is bound by the TLD Registrar Solutions Ltd. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 2015, 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@aaoutlet.com, postmaster@aaoutlets.com. Also on December 11, 2015, 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 January 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 names be transferred from Respondent to Complainant.
Complainant’s Contentions in This Proceeding:
Complainant owns a trademark registration for the ALEX AND ANI trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,549,848, registered Mar. 19, 2002). Complainant asserts that it also has common law trademark rights in for “A&A” and “AA.” The marks are used on or in connection with the sale of jewelry. The <aaoutlet.com> and <aaoutlets.com> domain names are confusingly similar to the ALEX AND ANI trademark. The disputed domain names are also confusingly similar to the “A&A” and “AA” trademarks because both domain names add the gTLD “.com” in addition to a generic term (“outlet” or “outlets”). Further, both domain names contain the entire “AA” mark, while merely omitting the ampersand from the “A&A” mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain names, nor is Respondent a licensee of Complainant. Additionally, Respondent is not making a bona fide offering or a legitimate noncommercial or fair use because the domain names are being used to sell counterfeit products.
Respondent exhibited bad faith under Policy ¶ 4(b)(ii) by displaying a pattern of bad faith registrations. Respondent is also disrupting Complainant’s business in bad faith under Policy ¶ 4(b)(iii) by using the domain names to sell counterfeit versions of Complainant’s products. Such use of the domain names to sell counterfeit products also amounts to bad faith under Policy ¶ 4(b)(iv), as such behavior creates a likelihood of confusion from which it is clear that Respondent is profiting. Furthermore, the sale of counterfeit goods makes it clear that Respondent had actual knowledge of Complainant’s trademark rights at the time of registration.
Respondent’s Contentions
Respondent failed to submit a response in this proceeding, but the Panel notes that Respondent registered the <aaoutlet.com> domain name on June 29, 2015, and registered the <aaoutlets.com> on October 20, 2015.
Complainant established rights and legitimate interests in the disputed domain names.
Respondent offered no evidence and no evidence supports any rights by Respondent to or legitimate interests in the marks and disputed domain names based on Respondent’s conduct in this case.
Respondent registered a disputed domain name that is confusingly similar to marks registered by Complainant and that are, accordingly, Complainant’s protected marks.
Given Respondent’s use of the domain name, Respondent registered and made a non-bona fide use of the disputed domain name in bad faith.
Respondent engaged in a pattern of bad faith registrations and uses and did so in this case as well.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar:
Complainant owns a trademark registration for the ALEX AND ANI trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,549,848, registered Mar. 19, 2002). The mark is used on or in connection with the sale of jewelry. The Panel finds that a USPTO trademark registration suffices to demonstrate enforceable rights under the UDRP. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Furthermore, Complainant asserts that it also has common law trademark rights for “A&A” and “AA,” both of which appear to be a derivation of the ALEX AND ANI mark, but nonetheless are separate from it. To acquire such common law rights in a trademark, the complainant must show that the mark has over the years of its use, established secondary meaning. See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (holding that complainants must establish secondary meaning in order to acquire common law trademark rights for purposes of Policy ¶ 4(a)(i)). Relevant evidence of secondary meaning includes “length [of time in use] and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). The Panel notes that Complainant submitted a screen shot, which is relevant to an analysis of whether common law rights exist for “A&A” or “AA.” See Attached Exhibit 1F. Because this evidence is sparse; however, the proof before the Panel suggests that whether or not Complainant has common law rights is irrelevant to the outcome. Complainant has legal rights in the mark and the Panel does not have to reach the issue of common law rights. Given Respondent’s use of these disputed domain names, the evidence further permits an inference that Respondent knew of Complainant’s use of the mark and intentionally and opportunistically used Complainant’s mark in order to sell counterfeit versions of Complainant’s products.
Complainant also argues that the <aaoutlet.com> and <aaoutlets.com> domain names are confusingly similar to the ALEX AND ANI trademark, as well as use of the abbreviated forms of the mark, i.e. “A&A” and “AA.”
The <aaoutlet.com> and <aaoutlets.com> domain names are confusingly similar to the ALEX AND ANI trademark. The Panel notes that the “aa” portion of the domain name is the only portion that contains some of ALEX AND ANI. While it is true that prior panels have found as irrelevant alterations such as the addition of “.com” (see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”)), and generic terms (see Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term)), this Panel finds that the “aa” portion of the domain name coupled with the word “outlet” and providing for the sale of ALEX AND ANI Jewelry in counterfeit form is sufficiently similar to “ALEX AND ANI” to find confusing similarity between the mark and the domain name. Further despite the fact that “aa” omits a significant portion of the ALEX AND ANI trademark, the Panel finds confusing similarity under Policy ¶ 4(a)(i) between the <aaoutlet.com> and <aaoutlets.com> domain names and the ALEX AND ANI mark because Respondent registered the disputed domain names in order to sell counterfeits of Complainant’s products.
The <aaoutlet.com> and <aaoutlets.com> domain names are confusingly similar to the “A&A” and “AA” trademarks. Complainant notes that both domain names add the gTLD “.com” in addition to a generic term (“outlet” or “outlets”). Further, both domain names contain the entire “AA” mark, while merely omitting the ampersand from the “A&A” mark. As noted above, the addition of “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Prior panels have also found confusing similarity where the domain name contains the entire mark in addition to a generic term, or where the domain name contains the dominant portion of the mark and merely omits an article of punctuation. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Thus, the Panel finds that the <aaoutlet.com> and <aaoutlets.com> domain names are confusingly similar to Complainant’s protected trademarks.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered disputed domain names that are confusingly similar to the Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known as the <aaoutlet.com> and <aaoutlets.com> domain names, and Complainant has not authorized Respondent to use its marks in any way. Complainant has not issued any licensing rights that would allow Respondent to use the Complainant’s marks in domain names or to sell counterfeit versions of Complainant’s products.. The Panel notes that “Domain Admin” is listed as the registrant of record for the disputed domain names. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain names or in possession of licensing rights. Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii) absent some evidence to suggest such rights or legitimate interests. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent uses the domain names to sell counterfeit goods. The Panel notes that Complainant attached a copy of the resolving webpages. See Attached Ex. 7 and 20. Prior panels have declined to award a respondent rights under Policy ¶¶ 4(c)(i) and (iii) where the domain name was used to sell counterfeit goods or services. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). The Panel finds that evidence in the record suggests that Respondent is doing so here; Respondent has no rights or legitimate interests under Policy ¶¶ 4(c)(ii) and (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names and Complainant’s protected mark referenced in them; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and used the disputed domain names in bad faith. Complainant contends that Respondent engaged in bad faith under Policy ¶ 4(b)(ii) by displaying a pattern of bad faith registrations. Complainant provided copies of prior UDRP decisions where Respondent was found to have acted in bad faith, thus resulting in the transfer of the domain names at issue. See Compl., at Attached Ex. 16-17. Prior panels have established that prior adverse UDRP decisions will amount to bad faith under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). Accordingly, this Panel likewise finds bad faith under Policy ¶ 4(b)(ii).
Complainant contends that Respondent engaged in bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. Complainant believes its business is being disrupted because the domain names resolve to a webpage that sells counterfeit and competing products. Again, the Panel notes that Complainant attached a copy of the resolving webpages. See Compl., at Attached Ex. 7 and 20. Prior panels have held that such conduct supports findings of bad faith under Policy ¶ 4(b)(iii) whether the goods were counterfeit or not. Without permission, Respondent used Complainant’s own mark to sell versions of Complainant’s goods, and counterfeit versions at that, and this constitutes bad faith conduct. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). Thus, the Panel finds that Respondent is selling counterfeit products and this supports findings of bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent engaged in bad faith conduct under Policy ¶ 4(b)(iv) as well by seeking to gain commercially from a likelihood of confusion. Complainant believes that the offering of counterfeit versions of Complainant’s products created a likelihood of confusion between it and some suggested sponsorship of Respondent. Respondent’s attempt at selling these goods, according to Complainant, is evidence of Respondent’s attempt to seek commercial gain. The Panel notes the aforementioned evidence regarding the webpages resolving from the disputed domain names. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the domain name was used to sell counterfeit goods or services. See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Therefore, the Panel finds that Respondent sold counterfeit goods, which supports findings of bad faith under a Policy ¶ 4(b)(iv) analysis.
Lastly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the ALEX AND ANI, as well as the “A&A” and “AA” marks. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels do not find bad faith where only constructive notice is likely, the Panel finds here that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aaoutlet.com> and <aaoutlets.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist.
Dated: January 19, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page