DECISION

 

Ivory Ella, LLC v. Domain Admin / Whois Privacy Corp.

Claim Number: FA1705001731909

PARTIES

Complainant is Ivory Ella, LLC (“Complainant”), represented by John P. Sullivan of Blank Rome LLP, Pennsylvania, USA.  Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ellaoutlet.com>, registered with Internet Domain Service Bs Corp.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 16, 2017; the Forum received payment on May 16, 2017.

 

On May 17, 2017, Internet Domain Service Bs Corp. confirmed by e-mail to the Forum that the <ellaoutlet.com> domain name is registered with Internet Domain Service Bs Corp. and that Respondent is the current registrant of the name.  Internet Domain Service Bs Corp. has verified that Respondent is bound by the Internet Domain Service Bs Corp. 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 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@ellaoutlet.com.  Also on May 17, 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 June 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Ivory Ella, LLC, is a retailer of apparel and jewelry with headquarters based in Westerly, Rhode Island, USA. In connection with this business, Complainant uses the IVORY ELLA marks to promote its goods and services. Complainant has rights in the IVORY ELLA marks based upon registration with the United States Patent and Trademark Office

(“USPTO”) (Reg. No. 4,886,051, registered Jan. 12, 2016). See Compl., at Attached Ex. B. Respondent’s domain name is confusingly similar to the IVORY ELLA marks because Respondent’s domain copies the “ELLA” portion of the IVORY ELLA marks and merely adds the descriptive term “outlet” and the generic top-level-domain (“gTLD”) “.com.”

2.    Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the <ellaoutlet.com> domain name. Further, Respondent failed to use <ellaoutlet.com> in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, <ellaoutlet.com> purports to sell products that are identical to those offered by Complainant. See Compl., at Attached Ex. D (Screenshots of the resolving website for <ellaoutlet.com>). Further, Respondent only uses the disputed domain name to trade off of the goodwill of the IVORY ELLA mark in order to create more traffic on its domain name.

3.    Respondent registered and used <ellaoutlet.com> in bad faith. Respondent intentionally attracts Internet users seeking Complainant to Respondent’s website for commercial gain.

 

B.   Respondent

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <ellaoutlet.com> domain name is confusingly similar to Complainant’s IVORY ELLA mark.

2.    Respondent does not have any rights or legitimate interests in the <ellaoutlet.com> domain name.

3.    Respondent registered or used the <ellaoutlet.com> domain name in bad faith.

 

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 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

Complainant claims rights in the IVORY ELLA marks based upon registration with the USPTO (Reg. No. 4,886,051, registered Jan. 12, 2016). See Compl., at Attached Ex. B. Registration of  a mark with the USPTO is sufficient to establish rights per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore finds Complainant has rights in the IVORY ELLA marks.

 

Next, Complainant contends Respondent’s domain name is confusingly similar to the IVORY ELLA marks as Respondent’s domain copies the “ELLA” portion of the IVORY ELLA marks and merely adds the descriptive term “outlet” and the gTLD “.com.” Removal of a word from a complainant’s mark does not remove the resulting term from the realm of confusing similarity; likewise, the addition of terms relevant to a complainant’s business and a gTLD do not adequately differentiate between the mark and the domain per Policy ¶ 4(a)(i). See Panco Men’s Products, Inc. v. LEN PETERSON / LEONARD L PETERSON, FA 1613409 (Forum May 26, 2015) (finding Respondent’s <genesvitamine.com> domain name is confusingly similar to the GENES VITAMIN E CREME mark pursuant to Policy  ¶4(a)(i).); see also Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Complainant contends Internet users visiting Respondent’s domain name would assume they are affiliated. The Panel agrees and finds Respondent’s domain name to be confusingly similar to Complainant’s mark per 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 shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 argues Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not commonly known by the <ellaoutlet.com> domain name. Where a Response is lacking, WHOIS information can be used to substantiate a finding that a respondent is not commonly known by a disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (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). Here, the WHOIS information of record names

“Domain Admin” as the registrant of the domain name. Use of a domain name privacy service can additionally evidence a finding that a respondent is not commonly known by a disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant.  In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). As such, the Panel finds that Respondent is not commonly known by <ellaoutlet.com>.

 

Next, Complainant argues Respondent failed to use <ellaoutlet.com> in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, <ellaoutlet.com> purports to sell products that are identical to those offered by Complainant. See Compl., at Attached Ex. D (Screenshots of the resolving website for <ellaoutlet.com>). Use of a disputed domain name to pass off and divert Internet users from a complainant to a respondent’s competing business indicates a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Here, Complainant argues, Respondent trades upon the goodwill associated with Complainant to divert business away from Complainant. As such, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends Respondent registered and used <ellaoutlet.com> in bad faith by intentionally attracting Internet users seeking Complainant to Respondent’s website for commercial gain through the use of Complainant’s marks. A complainant can evince bad faith registration and use where a respondent trades upon the goodwill of a complainant for diversionary purposes, as well as commercial gain. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Here, Complainant argues, Respondent used Complainant’s mark to divert Internet users to Respondent’s webpage to sell items similar to Complainant’s products and appears to be an agent of Complainant for Respondent’s commercial gain. See Compl., at Attached Ex. D. As such, the Panel agrees and finds that Respondent registered and uses the <ellaoutlet.com> domain name in bad faith per Policy ¶ 4(b)(iv).

 

DECISION

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

 

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

 

John J. Upchurch, Panelist

June 22, 2017