Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1712001763598
Complainant is Lokai Holdings, LLC (“Complainant”), represented by Shana T. Don of Scarinci Hollenbeck LLC, New York. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mybalancebracelets.com>, registered with TLD Registrar Solutions Ltd..
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 19, 2017; the Forum received payment on December 19, 2017.
On December 20, 2017, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <mybalancebracelets.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 December 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 2018 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@mybalancebracelets.com. Also on December 26, 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 January 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a well-known jewelry and athletic apparel business. Since 2013, Complainant has spent significant resources in the advertising and marketing of the FIND YOUR BALANCE mark, has annual sales of $50 million, and donates 10% of all profits to charity. Additionally, Complainant has rights in the FIND YOUR BALANCE mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,870,494, registered Dec. 15, 2015). See Compl. Ex. D. Respondent’s <mybalancebracelets.com> domain name is confusingly similar to Complainant’s FIND YOUR BALANCE mark because Respondent eliminates the terms “find” and “your” in Complainant’s mark, adds the terms “my” and “bracelets” and adds a “.com” generic top level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <mybalancebracelets.com> domain name because Respondent is not authorized or licensed to use Complainant’s FIND YOUR BALANCE mark and Respondent is not commonly known by the disputed domain name according to WHOIS information. Respondent’s attempts to pass off as Complainant by selling counterfeit products does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use at the <mybalancebracelets.com> domain name.
Respondent registered and used the <mybalancebracelets.com> domain name in bad faith when Respondent disrupted Complainant’s business selling competing and counterfeit versions of Complainant’s goods. Additionally, Respondent commercially benefitted from consumer confusion when it sold counterfeit goods. Respondent’s use of a privacy service indicates bad faith registration and use. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the FIND YOUR BALANCE mark prior to registering the <mybalancebracelets.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a well-known jewelry and athletic apparel business.
2. Complainant has established its trademark rights in the FIND YOUR BALANCE mark by registering the same with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,870,494, registered Dec. 15, 2015).
3. Complainant has also established common law trademark rights to FIND YOUR BALANCE from 2013.
4. Respondent registered the <mybalancebracelets.com> domain name on September 28, 2015.
4. Respondent has caused the domain name to be used to pass Respondent off as Complainant by selling of counterfeit products.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the FIND YOUR BALANCE mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Here, Complainant provided this Panel with copies of its USPTO registrations for the FIND YOUR BALANCE mark (e.g., Reg. No. 4,870,494, registered Dec. 15, 2015). See Compl. Ex. D. The Panel notes Respondent’s registration of the <mybalancebracelets.com> domain name predates Complainant’s USPTO registration. See Compl. Ex. A. However, that does not prevent a finding under this element that Complainant has trademark rights sufficient to give it standing to bring the Complaint and the Panel so finds. The Panel finds Complainant has sufficiently demonstrated rights in the FIND YOUR BALANCE mark.
Next, Complainant argues to have rights in the FIND YOUR BALANCE mark since Complainant’s first commercial use of the mark in 2013. Complainant claims to have spent significant resources to advertise and market the FIND YOUR BALANCE mark, has annual sales of $50 million, and donates 10% of all profits to charity. While Complainant does not specifically argue that it has common law trademark rights in FIND YOUR BALANCE, the Panel finds Complainant’s evidence infers that the Complainant has acquired secondary meaning within the FIND YOUR BALANCE mark. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Here, Complainant contends and has provided advertisements of Complainant’s FIND YOUR BALANCE bracelets from Google searches, advertisements for Complainant’s goods found on social media, and a certification from Mark Izen, Complainant’s manager. See Compl. Exs. E, H, I, K, and L. Therefore, the Panel finds that Complainant does hold common law rights in the name for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FIND YOUR BALANCE mark. Complainant argues Respondent’s <mybalancebracelets.com> domain name is confusingly similar to Complainant’s FIND YOUR BALANCE mark because Respondent merely replaced the words “find” and “your” in the mark with the terms “my” and “bracelets,” which alludes to Complainant’s business, and added a gTLD. Adding descriptive terms and a gTLD while deleting terms within a mark are insufficient changes to differentiate the disputed domain name from a complainant’s mark per Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”); see also AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).). In this case, Respondent eliminated the words “find” and “your” in Complainant’s mark and added the terms “my,” “bracelets,” and a “.com” gTLD to Complainant’s mark. Therefore, the Panel finds Respondent’s <mybalancebracelets.com> domain name is confusingly similar to Complainant’s FIND YOUR BALANCE mark per Policy ¶ 4(a)(i) as internet users would assume that the domain name dealt with opportunities for users to acquire Complainant’s bracelets which the evidence establishes are known as “balanced bracelets”.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s FIND YOUR BALANCE mark and has used it in its domain name, merely replacing the words “find” and “your” in the mark with the terms “my” and “bracelets,” which clearly alludes to Complainant’s business;
(b) Respondent registered the <mybalancebracelets.com> domain name on
September 28, 2015;
(c) Respondent has caused the domain name to be used to pass Respondent
off as Complainant by selling counterfeit products;
(d)Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent has no rights in the <mybalancebracelets.com> domain name because Respondent is not authorized or licensed to use Complainant’s FIND YOUR BALANCE mark and Respondent is not commonly known by the disputed domain name. In cases where a respondent fails to respond, WHOIS information may be used to determine whether the respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information in this case identifies Respondent as “Domain Admin/ Whois Privacy Corp.” See Compl. Ex. A. Thus, the Panel finds Respondent is not commonly known by the <mybalancebracelets.com> domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to sell counterfeit versions of Complainant’s products at the website to which the <mybalancebracelets.com> domain name resolves. Selling unauthorized or counterfeit products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 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). Here, Complainant argues and Respondent does not deny that Respondent’s <mybalancebracelets.com> domain name shows a variety of bracelets at discounted prices being sold and are advertised as Complainant’s “Lokai” bracelets. See Compl. Ex. B. Therefore, the Panel finds Respondent’s attempts to sell counterfeit versions of Complainant’s products does not confer any rights or legitimate interests on Respondent per Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and is using the <mybalancebracelets.com> domain name in bad faith by selling counterfeit goods that disrupt Complainant’s business. Selling counterfeit and competing goods that disrupt a complainant’s business may indicate bad faith registration and use per Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”). Here, Complainant contends and Respondent does not deny that Respondent’s <mybalancebracelets.com> domain name offers Complainant’s “Lokai” bracelets at discounted prices. See Compl. Ex. B. Thus, the Panel finds Respondent’s selling of counterfeit goods disrupts Complainant’s business per Policy ¶ 4(b)(iii).
Secondly, Complainant argues Respondent commercially benefits from user confusion when it sells counterfeit versions of Complainant’s goods at the disputed domain name and this indicates bad faith registration and use. Diverting users to a respondent’s site that sells counterfeit products for commercial gain by creating a likelihood of confusion as to a complainant’s affiliation with the disputed domain name may indicate bad faith registration and use per Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). Here, Complainant argues that Respondent does not deny that the website to which the <mybalancebracelets.com> domain name resolves displays Complainant’s marks throughout the webpage and offers to sell “Lokai” bracelets. See Compl. Ex. B. Therefore, the Panel finds Respondent commercially benefits from consumer confusion when it sells counterfeit products per Policy ¶ 4(b)(iv).
Thirdly, Complainant argues Respondent had actual and constructive knowledge of Complainant’s FIND YOUR BALANCE mark prior to registering the disputed domain name as evidenced by the prominent display of the mark and mimicking Complainant’s website. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the disputed domain name, Respondent had actual knowledge of the mark and that this indicates bad faith registration and use per Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). Thus, the Panel finds that Respondent registered the disputed domain name with actual knowledge and in bad faith per Policy ¶ 4(a)(iii).
The Panel also notes for the purposes of the foregoing analysis that the FIND YOUR BALANCE trademark was registered on December 15, 2015 and that the domain name was registered prior to the trademark, albeit by only three months or so, on September 28, 2015. However, it is clear that Complainant also had common law trademark rights in the mark, that they probably began in 2013 and that the domain name was thus registered after Complainant had acquired its trademark rights.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the FIND YOUR BALANCE mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mybalancebracelets.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 22, 2018
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