Alex and Ani, LLC v. Li Zhongji
Claim Number: FA1703001720257
Complainant is Alex and Ani, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Li Zhongji (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alexandani.co>, (‘the Domain Name’) registered with eNom, Inc..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2017; the Forum received payment on March 6, 2017.
On March 6, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <alexandani.co> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 March 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2017 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@alexandani.co. Also on March 7, 2017, 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 April 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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. 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarized as follows:
Complainant owns registered trademarks for ALEX AND ANI, inter alia, in the USA for a variety of goods including perfume, toiletries and jewelery with first use recorded as 1995. It owns alexandani.com.
The Domain Name is identical or confusingly similar to Complainant’s mark. The mark is included in the Domain Name in its entirety, merely omitting the space and adding the country code top level domain (‘ccTLD’) .co. Domain Name syntax prohibits spaces and requires TLDs.
Respondent has no rights or legitimate interests in respect of the Domain Name. It is not commonly known by the Domain Name. Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s mark in any domain name.
Respondent responded to a cease and desist letter from Complainant with a request for $6500 for transfer of the Domain Name to Complainant. Respondent is using the Domain Name to direct unsuspecting Internet users to a web site featuring generic links to third party businesses some of which compete directly with Complainant’s business, presumably for pay for click fees. As such Respondent is not using the Domain Name to provide a bona fide offering of goods and services, nor a legitimate non commercial or fair use.
The earliest date the Domain Name was registered was August 30, 2016 which is significantly after Complainant’s first use in commerce, September 25, 1995 and registration of its marks on March 19, 2002.
The Domain Name was registered and used in bad faith. Respondent has offered the name generally for sale on Sedo.com and on the whoIS of the Domain Name. Use as a click through site is bad faith and disruptive under Policy 4 (b)(iii). Respondent is attracting and misleading Internet users for its own profit under Policy 4 (b)(iv). The nature of the competing goods offered shows Respondent was aware of Complainant and its business and the correctly spelled version of Complainant’s mark has appeared on this sites. The typo nature of the Domain Name and other typosquatting versions of third party famous marks by Respondent shows the Domain Name was registered and used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns registered trademarks for ALEX AND ANI, inter alia, in the USA for a variety of goods including perfume, toiletries and jewellery with first use recorded as 1995. It owns alexandani.com.
The Domain Name has been pointed to third party pay per click links and offered for sale to Complainant specifically for $6500 and also generally on an auction web site and on The WhoIS for the Domain Name.
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.
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 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 (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 and/or Confusingly Similar
The Domain Name consists of Complainant's ALEX AND ANI mark and the gTLD .co indicating Colombia.There does not appear to be any connection with the country Columbia and the Domain Name or Respondent. The .co domain can also be informally used to mean ‘company’.
Because .co is a top level domain which can be interpreted as meaning ‘company’ use of this ccTLD may add to likely confusion that this is the home of the company known as ALEX AND ANI, Complainant.
In any event under the Policy for the purposes of the comparison the distinctive part of the Domain Name is Complainant’s ALEX AND ANI mark. See Crocs Inc. v [Registrant], FA 1043196 (Forum Sept 2, 2007)(determining that ‘the addition of a ccTLD is irrelevant to the Policy 4 (a)(i) analysis, a top level domain is required of all domain names.’). (It is not alleged that the top level domain forms part of Complainant’s trade mark as used in the Domain Name.)
Accordingly, the Panel holds that the Domain Name is identical for the purposes of the Policy with a mark in which Complainant has rights.
Rights or Legitimate Interests
Respondent has not answered the substantive points in this Complaint and has not provided any legitimate reason why he should be able to use Complainant’s mark in the Domain Name. He does not appear to be commonly known by the Domain Name or authorised by Complainant. Using for third party competing commercial links does not constitute bona fide use or a legitimate fair use. See CheapCaribbean.com, Inc. v Moniker Privacy Services, FA 1411001589962 (Forum Jan. 1, 2015)(‘The Panel finds that respondent’s use of the cheapcaribbean.com domain name to promote links in competition with complainant’s travel agency services does not fall within Policy 4 ( c )(i)’s bona fide offering of goods and services, nor does it amount to a legitmate non commercial or fair use described in Policy 4( c )(iii)). On April 3, 2017 Respondent confirmed by way of email to the Center that he relinquishes the Domain Name and does not want to pursue the dispute further. As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name;" (s4(b)(i)).
Respondent has offered to sell the Domain Name to Complainant for $6,500 USD which far exceeds costs of registration. See George Weston Bakeries Inc. v McBroom, FA 933276 (Forum Apr 25, 2007) (finding bad faith under Policy 4 (b)(i) where Respondent registered the disputed domain name and offered it for sale for far more that its estimated out of pocket costs initially incurred in registering it).
Further, as referred to above, Respondent has now indicated it does not wish to contest the Complaint.
As such, the Panel holds that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraph 4 (b)(i) and there is no need to consider further allegations of bad faith made by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alexandani.co> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 12, 2017
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