Alex and Ani, LLC v. Justin Wei
Claim Number: FA1607001686366
Complainant is Alex and Ani, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Justin Wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alexandanishop.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 29, 2016; the Forum received payment on July 29, 2016.
On August 1, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <alexandanishop.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 August 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@alexandanishop.com. Also on August 8, 2016, 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 September 7, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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.
A. Complainant
Complainant registered its ALEX AND ANI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,549,848, registered Mar. 19, 2002), and holds rights in the mark for marketing various jewelry and fashion products. Respondent’s domain is confusingly similar to Complainant’s mark because it merely adds the generic term “shop” and the “.com” generic top-level domain (“gTLD”) to the fully incorporated ALEX AND ANI mark, less the spaces.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not permitted Respondent to make use of the ALEX AND ANI mark, and Respondent is not commonly known by the disputed domain name. Respondent’s website, to which the disputed domain resolves, sells counterfeit versions of Complainant’s products. This does not constitute a bona fide offering of goods or services, and cannot be said to be a legitimate noncommercial or fair use of the domain name. Additionally, Complainant sent Respondent a cease and desist letter, informing Respondent that it was infringing on Complainant’s intellectual property rights; to date no reply has been received from Respondent.
Respondent has engaged in bad faith registration and use of the domain. First, Respondent is intentionally using the domain to disrupt the business of Complainant. Second, Respondent commercially gains from the sale of counterfeit jewelry. Third, the use of Complainant’s mark in Respondent’s domain, and the similarity between Respondent and Complainant’s websites, make it clear that Respondent registered the domain with actual knowledge of Complainant’s mark. Finally, Respondent used false and/or incomplete WHOIS contact information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <alexandanishop.com> 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.”).
Complainant contends that it has rights to the ALEX AND ANI mark based on its registration with the USPTO (Reg. No. 2,549,848, registered Mar. 19, 2002). The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s domain is confusingly similar to the ALEX AND ANI mark because it incorporates the entire mark less the spaces, and merely adds the generic term “shop” and the gTLD “.com.” Panels have agreed that the addition of a generic term does not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Panels have also agreed that the elimination of spaces and the affixation of a gTLD do not establish distinctiveness in a domain name. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Thus, the Panel finds that Respondent’s domain is confusingly similar to the ALEX AND ANI mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 asserts that Respondent has no rights or legitimate interests in the domain. Complainant contends that it has not permitted Respondent to use its mark, and that Respondent is not commonly known by the domain. The Panel notes that the WHOIS information for the domain lists “Justin Wei” as registrant. Panels have held that where there is a lack of evidence to the contrary, the WHOIS information is sufficient to imply that a respondent is not commonly known by a domain. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Thus, the Panel holds that Respondent is not commonly known by the domain.
Complainant contends that Respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain. Complainant asserts that Respondent is using the domain to sell counterfeit versions of Complainant’s products, for a cheaper price. Panels have held that selling counterfeit versions of a complainant’s products is not a bona fide offering of goods and 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). Therefore, the Panel agrees that Respondent lacks rights or legitimate interests in the domain under Policy ¶¶ 4(c)(i) and (iii).
Complainant claims that it sent Respondent a cease and desist letter, informing Respondent that it was infringing on Complainant’s intellectual property rights. According to Complainant, no reply has been received from Respondent. Panels have decided that a respondent lacks rights and legitimate interests in a domain where it fails to respond to a complainant’s cease and desist letter. See The Great Eastern Life Assurance Company Ltd. v. Unasi Inc., D2005-1218 (WIPO Jan. 26, 2006) (stating, “Panel finds that the Respondent’s failure to counter the allegations of the cease and desist letter amounts to adoptive admission of the allegations,” and finding no rights or legitimate interests as the prima facie burden shifted to the respondent, who did not submit a response and therefore failed under Policy ¶ 4(a)(ii)). The Panel accepts Complainant’s contention and finds that Respondent lacks rights and legitimate interests in the disputed domain.
Complainant has proved this element.
Complainant asserts that Respondent’s use of the disputed domain to sell counterfeit versions of Complainant’s products disrupts Complainant’s business. Panels have held such use to constitute bad faith registration and use per Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). Therefore the Panel finds that Respondent engaged in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent intentionally uses the domain to sell unauthorized and counterfeit versions of Complainant’s products. Panels have held that such use of a domain is evidence of bad faith under 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); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). Therefore, the Panel holds that Respondent has engaged in bad faith registration and use of the domain under Policy ¶ 4(b)(iv).
Complainant states that the use of its mark in Respondent’s domain, and the similarity between Respondent and Complainant’s websites, make it clear that Respondent registered the domain with actual knowledge of Complainant’s mark. Panels have held that a respondent demonstrated bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See 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). Accordingly, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
Complainant asserts that Respondent used false and/or incomplete WHOIS contact information. Panels have agreed that a respondent’s use of false and/or incomplete WHOIS information can be evidence of bad faith. See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith). Complainant does not provide any specific information regarding Respondent’s apparent use of false and/or incomplete WHOIS information and has not proved this allegation.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alexandanishop.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: September 13, 2016
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