Alex and Ani, LLC v. LUOLIANG / zhongyan zhu / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) / Song Xiu Mei
Claim Number: FA1608001689110
Complainant is Alex and Ani, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is LUOLIANG / zhongyan zhu / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) / Song Xiu Mei
(“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <a1exandani.co>, <alex2ani.co>, and <alexandanioutlets.co>, registered with Ourdomains Limited; <alex4ani.com>, <alexanionlines.com>, <alex2ani.com>, and <alexanionline.com>, registered with HiChina Zhicheng Technology Limited; and <alex2ani.club>, and <alexandanis.club>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 12, 2016; the Forum received payment on August 12, 2016.
On August 16, 2016, Ourdomains Limited confirmed by e-mail to the Forum that the <a1exandani.co>, <alex2ani.co>, and <alexandanioutlets.co> domain names are registered with Ourdomains Limited and that Respondent is the current registrant of the names. Ourdomains Limited has verified that Respondent is bound by the Ourdomains Limited 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 17, 2016, HiChina Zhicheng Technology Limited and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <alex4ani.com>, <alexanionlines.com>, <alex2ani.com>, and <alexanionline.com>, <alex2ani.club>, and <alexandanis.club> domain names are registered with HiChina Zhicheng Technology Limited and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. HiChina Zhicheng Technology Limited and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) have verified that Respondent is bound by the HiChina Zhicheng Technology Limited and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On August 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@alex2ani.co, postmaster@alexandanioutlets.co, postmaster@a1exandani.co, postmaster@alex4ani.com, postmaster@alexanionlines.com, postmaster@alex2ani.com, postmaster@alexanionline.com, postmaster@alex2ani.club, and postmaster@alexandanis.club. Also on August 23, 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 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant has rights in the ALEX AND ANI mark pursuant to its United States Patent and Trademark Office (“USPTO”) registrations (e.g., Reg. No. 2,549,848, registered Mar. 19, 2002). Respondent’s <alex2ani.co>, <alexandanioutlets.co>, <a1exandani.co>, <alex4ani.com>, <alexanionlines.com>, <alex2ani.com>, <alexanionline.com>, <alex2ani.club>, and <alexandanis.club> domain names are confusingly similar to the ALEX AND ANI mark.
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the domains, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. Further, Respondent is not making a bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, Respondent is selling jewelry that contains Complainant’s ALEX AND ANI mark at the website that resolves from the disputed domains. In doing so, Respondent creates an impression of association with Complainant, and engages in a scheme to defraud Internet users into thinking Respondent’s offerings are authentic.
iii) Respondent has registered and used the disputed domains in bad faith. Respondent has demonstrated a pattern of bad faith registrations due to the multiple domains in the instant dispute as well as its past history of bad faith UDRP findings against it. Respondent, through its competing use, has clearly intended to disrupt Complainant’s business per Policy ¶ 4(b)(iii), and to create confusion and profit therefrom, as per the language of Policy ¶ 4(b)(iv). Respondent had actual knowledge based on the incorporation of common misspellings of Complainant’s trademark and the misleading use of the domains.
B. Respondent
Respondent did not submit a Response. The Panel notes that the disputed domains were all registered on or about June/July 2016.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
Preliminary Issue 1: Language of the Proceedings
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel weighs the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Here, Complainant argues that Respondent has caused the content on the websites that resolve from the disputed domain names, the Contact email address, oflpdcom@gmail.com, and the Product Order Confirmation are all in English.
Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Preliminary Issue 2: 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 Respondent is employing the use of aliases based on the following:
1. The DNS freedns1.registrar-servers.com is similar for seven domain names, the DNS dns10.hichina.com is similar on two domain names.
2. The website content on the Home, Contact and Shipping and Returns page is the same for all domain names.
3. Product for two different style of bracelets, the model numbers, product photos, and price are the same on all websites.
4. The Contact Email address for placing orders is the same for all the domain names: oflpdcom@gmail.com.
While some of the domains show “Our Email: A VIP Customer Service, if you click on it, it will redirect to oflpdcom@gmail.com.
5. The IP Address 50.93.199.233 is similar for four domain names, and 162.255.119.253 is similar for three domain names.
6. Four domain names were registered on the same date, July 27, 2016.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities throughout all the disputed domain names are jointly controlled, and finds that all the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
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 claims it has rights in the ALEX AND ANI mark pursuant to its USPTO registrations (e.g., Reg. No. 2,549,848, registered Mar. 19, 2002). Panels have agreed that such a demonstration confers rights under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).). Therefore, this Panel agrees that Complainant has rights in the ALEX AND ANI mark under Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <alex2ani.co>, <alexandanioutlets.co>, <a1exandani.co>, <alex4ani.com>, <alexanionlines.com>, <alex2ani.com>, <alexanionline.com>, <alex2ani.club>, and <alexandanis.club> domain names are confusingly similar to the ALEX AND ANI mark. Alterations include combinations of the following: elimination of “AND” from the mark; adding generic term “outlets” or “online(s);” addition of the numbers “1,” “2,” or “4;” addition of the letter “s;” misspelling the mark; addition of the generic top-level domain (“gTLD”) “.com” or “.club;” and the addition of the “.co” country-code top-level domain (“ccTLD”) suffix. The following represents precedent that have deemed such alterations confusingly similar.
Elimination of word from mark. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.).
Addition of generic term. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
Adding numbers 1, 2, or 4. See Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (holding the <pandora1.com> domain name confusingly similar to the PANDORA trademark because the only difference between the two was the addition of the numeral “1”); see also Novartis AG v. boggs, william, FA 1570988 (Forum Aug. 25, 2014) (finding that the <freshlook2.com> domain name was confusingly similar to the complainant’s FRESHLOOK mark because the domain name contained the mark in its entirety and merely added the number “2”); see also TripAdvisor, LLC v. Zhong Wan / Wanzhongmedia, FA 1623450 (Forum July 31, 2015) (establishing a confusing similarity between the <tripadviso4.com> domain name and the TRIPADVISOR mark, as the domain name was created by swapping the letter ‘r’ from the mark for the number ‘4’).
Addition of “s.” See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”).
Misspelling. See generally Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”).
Addition of ccTLD “.co,” gTLD “.com,” and “.club.” See ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Compagnie des Montres Longines, Francillon S.A v. Jingjing Tang / Beijing shenmas clouds Network Technology Co., Ltd., FA 1591256 (Forum Dec. 29, 2014) (finding that the gTLD “.club” is one of the new gTLDs and should be disregarded when determining if a disputed domain name is confusingly similar to a complainant’s mark).
While Respondent’s domains at issue in this case incorporate a combination of the foregoing alterations to the ALEX AND ANI mark, this Panel agrees that the disputed domains are confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).
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 that Respondent has no rights or legitimate interests in the disputed domain names. To begin, Complainant argues that Respondent is not commonly known by the domain names, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. In such cases as this, where the respondent has not submitted a response, panels have found such allegations sufficient for a complainant to succeed under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Therefore, while the WHOIS lists “LUOLIANG / zhongyan zhu / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) / Song Xiu Mei,” this Panel agrees that Complainant has succeeded under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent is not making a bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, Respondent is selling jewelry that contains Complainant’s ALEX AND ANI mark at the website that resolves from the disputed domain names. In doing so, says Complainant, Respondent creates an impression of association with Complainant, and engages in a scheme to defraud Internet users into thinking Respondent’s offerings are authentic. Panels have agreed that selling counterfeit products of a complainant does not amount to a bona fide offering or a legitimate noncommercial or fair use. 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, this Panel agrees that Respondent has failed under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent has registered and used the disputed domain names in bad faith. First, Complainant argues that Respondent has demonstrated a pattern of bad faith registrations due to the multiple domain names in the instant dispute as well as its past history of bad faith UDRP findings against it. See Complainant's attached exhibit (UDRP decisions against Respondent include: AVK Holding A/S v. Li Se Hui, Hong Feng Fa Men You Xian Gong Si / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), D2016-1033 (WIPO July 14, 2016); Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), FA 1612750 (Forum May 13, 2015); Mou Limited v. Erica, Zhang Da Yan/YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), D2016-0603 (WIPO May 9, 2016)). Panels have agreed that under such circumstances, a Policy ¶ 4(b)(ii) finding follows. 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, FA1408001576648 (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.”). This Panel therefore agrees that Respondent has demonstrated a pattern of bad faith registrations under Policy ¶ 4(b)(ii).
Next, Complainant argues that Respondent, through its competing use, has clearly intended to disrupt Complainant’s business per Policy ¶ 4(b)(iii), and to create confusion and profit therefrom, as per the language of Policy ¶ 4(b)(iv). The Panel notes Respondent’s alleged counterfeit use at Complainant's attached exhibit. Panels have agreed that such arrangements on disputed domain names have been found in bad faith. 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).”); see also 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). Therefore, while Respondent is alleged to have engaged in counterfeit use, this Panel agrees that Policy ¶¶ 4(b)(iii) and (iv) has been evidenced.
Lastly, based on Respondent’s use, Complainant argues that Respondent had actual knowledge when registering and subsequently using the disputed domains. Panels have agreed that the totality of the circumstances under which disputed domain names are used may lead to a finding of actual knowledge under a nonexclusive analysis of Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Therefore, this Panel agrees that the names used for the domains and the use made of them constitutes actual knowledge, and thus bad faith, under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alex2ani.co>, <alexandanioutlets.co>, <a1exandani.co>, <alex4ani.com>, <alexanionlines.com>, <alex2ani.com>, <alexanionline.com>, <alex2ani.club>, and <alexandanis.club> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 6, 2016
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