Alex and Ani, LLC v. zhongqi liu / liu zhongqi
Claim Number: FA1605001675600
Complainant is Alex and Ani, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is zhongqi liu / liu zhongqi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <storealexandani.com>, registered with Bizcn.com, Inc.
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 18, 2016; the Forum received payment on May 18, 2016. The Complaint was received in both Chinese and English.
On May 19, 2016, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <storealexandani.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 May 25, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 14, 2016 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@storealexandani.com. Also on May 25, 2016, the Chinese language 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 21, 2016, 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 name be transferred from Respondent to Complainant.
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, Alex and Ani, LLC, uses the ALEX AND ANI mark in connection with its business selling cosmetics products and accessories. Complainant has registered the ALEX AND ANI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,549,848, registered Mar. 19, 2002), which demonstrates rights in the mark. Respondent’s <storealexandani.com> domain name is confusingly similar to Complainant’s mark because it incorporates the mark in its entirety except for the spaces between words and only adds the generic term “store” and the generic top-level domain (“gTLD") “.com.”
Respondent, zhongqi liu / liu zhongqi, has no rights or legitimate interests in the <storealexandani.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <storealexandani.com> domain name. Rather, the domain name resolves to a website that offers counterfeit versions of Complainant’s products.
Respondent’s registration and use of the <storealexandani.com> domain name disrupts Complainant’s legitimate business under Policy ¶ 4(b)(iii) because Respondent uses the disputed domain name to sell counterfeit versions of Complainant’s products. Further, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the <storealexandani.com> domain name’s resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant uses the ALEX AND ANI mark in connection with its business selling cosmetics products and accessories. Complainant has rights in the ALEX AND ANI mark through registration with the USPTO (e.g., Reg. No. 2,549,848, registered Mar. 19, 2002). Respondent’s <storealexandani.com> domain name is confusingly similar to Complainant’s mark.
Respondent registered the <storealexandani.com> domain name on April 6, 2016.
Respondent has no rights or legitimate interests in the <storealexandani.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <storealexandani.com> domain name. The domain name resolves to a website that offers counterfeit versions of Complainant’s products.
Respondent’s registration and use of the <storealexandani.com> domain name disrupts Complainant’s legitimate business under Policy ¶ 4(b)(iii). Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the <storealexandani.com> domain name’s resolving website.
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.”).
Complainant has rights in the ALEX AND ANI mark under Policy ¶ 4(a)(i) through registration with the USPTO, even though Respondent reportedly resides in China. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man).
Respondent’s <storealexandani.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) because it incorporates the mark in its entirety except for the spaces between words and only adds the generic term “store” and the gTLD “.com.”
Respondent has no rights or legitimate interests in the <storealexandani.com> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information for the <storealexandani.com> domain name lists “zhongqi liu” as registrant. Complainant has not given Respondent permission to use its ALEX AND ANI mark. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the <storealexandani.com> domain name. Rather, the domain name resolves to a website that offers counterfeit versions of Complainant’s products and uses Complainant’s ALEX AND ANI mark. A respondent’s use of a complainant’s mark to operate a website offering counterfeit versions of the complainant’s goods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under 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).
Respondent’s registration and use of the <storealexandani.com> domain name disrupts Complainant’s legitimate business under Policy ¶ 4(b)(iii) because Respondent uses the disputed domain name to sell counterfeit versions of Complainant’s products. See Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA1410001587466 (Forum Dec. 13, 2014) (“The Panel finds that Respondent’s use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant’s business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).”).
Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the <storealexandani.com> domain name’s resolving website. Therefore, Respondent registered and uses the domain name in 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).
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 <storealexandani.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 1, 2016
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