Kurk Wasserman Consulting, L.L.C. v. ming li / sunny mzt / sunny Lee
Claim Number: FA1705001729709
Complainant is Kurk Wasserman Consulting, L.L.C. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is ming li / sunny mzt / sunny Lee (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lilashstore.com>, <ilashserum.com>, <ilash-uk.com>, <ilashcanada.com>, <ilashsale.com>, <lilashau.com>, <lilashnz.com>, ,<ilash-store.com>, <ilasheyelash.com>, <lashserumstore.com>, <eyelashserumshop.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 1, 2017; the Forum received payment on May 3, 2017.
On May 2, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lilashstore.com>, <ilashserum.com>, <ilash-uk.com>, <ilashcanada.com>, <ilashsale.com>, <lilashau.com>, <lilashnz.com>, ,<ilash-store.com>, <ilasheyelash.com>, <lashserumstore.com>, <eyelashserumshop.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@lilashstore.com, postmaster@ilashserum.com, postmaster@ilash-uk.com, postmaster@ilashcanada.com, postmaster@ilashsale.com, postmaster@lilashau.com, postmaster@lilashnz.com, postmaster@ilash-store.com, postmaster@ilasheyelash.com, postmaster@lashserumstore.com, and postmaster@eyelashserumshop.com. Also on May 3, 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 May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Kurk Wasserman Consulting, L.L.C., is developer and retailer of eyelash serum and other eyelash enhancement products based in Scottsdale, Arizona, USA. Complainant uses the LILASH mark to promote its goods and services. Complainant has rights in the LILASH mark due to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,920,521, registered Feb. 15, 2011). Respondent’s <lilashstore.com>, <ilashserum.com>, <ilash-uk.com>, <ilashcanada.com>, <ilashsale.com>, <lilashau.com>, <lilashnz.com>, <ilash-store.com>, <ilasheyelash.com>, <lashserumstore.com>, <eyelashserumshop.com> domain names are confusingly similar to Complainant’s mark. Each domain name contains a significant portion of Complainant’s mark as well as descriptive or geographic terms such as “store”, “serum”, “UK”, “Canada” and others.
Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names nor has Complainant authorized Respondent to use its mark. Further, Respondent has failed to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the domains all resolve to pages containing Complainant’s LILASH mark for the purpose of the sale of counterfeit versions of Complainant’s goods.
Respondent registered and used the disputed domain names in bad faith. Respondent intentionally attracts Internet users seeking Complainant or Complainant’s goods and services to Respondent’s webpages for Respondent’s commercial gain via the sale of counterfeit versions of Complainant’s goods. Respondent’s bad faith is further evidenced through its ownership of several domain names that are all confusingly similar to Complainant’s LILASH mark—evidence of a pattern of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Kurk Wasserman Consulting, L.L.C., is developer and retailer of eyelash serum and other eyelash enhancement products based in Scottsdale, Arizona, USA. Complainant uses the LILASH mark to promote its goods and services. Complainant has rights in the LILASH mark through registration with the USPTO (Reg. No. 3,920,521, registered Feb. 15, 2011). Respondent’s <lilashstore.com>, <ilashserum.com>, <ilash-uk.com>, <ilashcanada.com>, <ilashsale.com>, <lilashau.com>, <lilashnz.com>, <ilash-store.com>, <ilasheyelash.com>, <lashserumstore.com>, <eyelashserumshop.com> domain names are confusingly similar to Complainant’s mark.
Respondent, ming li / sunny mzt / sunny Lee, created the disputed domain names within a three-month window in 2016.
Respondent lacks rights and legitimate interests in the disputed domain names. Respondent’s domains all resolve to pages containing Complainant’s LILASH mark for the purpose of the sale of counterfeit versions of Complainant’s goods. Respondent also seeks to obtain credit card and personal information from visitors to its websites.
Respondent registered and used the disputed domain names in bad faith. Respondent intentionally attracts Internet users seeking Complainant or Complainant’s goods and services to Respondent’s webpages for Respondent’s commercial gain via the sale of counterfeit versions of Complainant’s goods. Respondent owns several domain names that are all confusingly similar to Complainant’s LILASH mark—evidence of a pattern of bad faith registration and use.
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all of the disputed domains list an identical email address for the registrant, use the same registrar, and were created within a three-month window. Further, the websites which resolve from all of the disputed domains are mere variations on one another and, in some cases, are identical across the different groups. Further, Complainant asserts that it won a UDRP case against a respondent utilizing the same email address used for the registration of the disputed domain names in the instant case. See Kurk Wasserman Consulting, L.L.C. v. Sunny Lee / gino yu, FA 1684505 (Forum Aug. 25, 2016). The Panel finds the domain names are commonly owned or controlled by a single Respondent who is using multiple aliases.
Complainant has rights in the LILASH mark through registration with the USPTO (Reg. No. 3,920,521, registered Feb. 15, 2011). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s domain names are confusingly similar to Complainant’s mark as each contains a significant portion of Complainant’s mark as well as descriptive terms such as “store”, “serum”, “UK”, “Canada” and others.
Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). The WHOIS information lists the registrants as “ming li,” “sunny mzt,” and “sunny Lee.”See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Respondent has failed to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent’s domain names resolve to pages that appropriate Complainant’s mark to pass off as Complainant and sell counterfeit versions of Complainant’s products. Use of a confusingly similar domain name to pass off as a mark holder and sell counterfeit goods in competition with the mark holder shows a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 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); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Respondent has a pattern of bad faith registration and use due to Respondent’s ownership of numerous domain names that are confusingly similar to the LILASH mark in the instant case. Further, Complainant won a UDRP judgment against a respondent that utilized the same email address for registration of the disputed domain names as was used in the instant case. See Kurk Wasserman Consulting, L.L.C. v. Sunny Lee / gino yu, FA 1684505 (Forum Aug. 25, 2016). Multiple domain names in the instant case show Respondent’s bad faith pursuant to Policy ¶ 4(b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA 1576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore the Panel finds bad faith under the provision.”).
Respondent intentionally attracts Internet users to Respondent’s disputed domain names for Respondent’s commercial gain through the sale of counterfeit products. Use of a confusingly similar domain name to divert Internet users looking for a complainant or a complainant’s goods and services to Respondent’s website that offers counterfeit products shows bad faith under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (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, and thus showed Policy ¶ 4(b)(iv) bad faith).
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 <lilashstore.com>, <ilashserum.com>, <ilash-uk.com>, <ilashcanada.com>, <ilashsale.com>, <lilashau.com>, <lilashnz.com>, ,<ilash-store.com>, <ilasheyelash.com>, <lashserumstore.com>, and <eyelashserumshop.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 10, 2017
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