Kendra Scott and Kendra Scott, LLC v. Jian Shan Chen / Guo Cai Lin
Claim Number: FA1901001824721
Complainant is Kendra Scott and Kendra Scott, LLC (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Jian Shan Chen / Guo Cai Lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ksjewelrysstore.com>, <kendrascott-us.com>, <kendrascott-vip.com>, <kendrascott-fl.com>, <kendrascott-de.com>, <kendrascott-austin.com>, <kendrascott-ca.com>, <kendrascott-online.com>, <kendrascott-shop.com>, <kendrascott-store.com>, <kendrascott-ar.com>, <kendrascott-outlet.com>, <kendrascott-jewelry.com>, <kendrascott-gift.com>, <kendrascott-ga.com>, <kendrascott-dc.com>, <kendrascott-ct.com>, <kendrascott-co.com>, <kendrascott-az.com>, and <kendravipscott.com>, registered with Chengdu West Dimension Digital Technology Co., 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 January 11, 2019; the Forum received payment on January 11, 2019.
On January 15, 2019 and January 16, 2019, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <ksjewelrysstore.com>, <kendrascott-us.com>, <kendrascott-vip.com>, <kendrascott-fl.com>, <kendrascott-de.com>, <kendrascott-austin.com>, <kendrascott-ca.com>, <kendrascott-online.com>, <kendrascott-shop.com>, <kendrascott-store.com>, <kendrascott-ar.com>, <kendrascott-outlet.com>, <kendrascott-jewelry.com>, <kendrascott-gift.com>, <kendrascott-ga.com>, <kendrascott-dc.com>, <kendrascott-ct.com>, <kendrascott-co.com>, <kendrascott-az.com>, and <kendravipscott.com>, domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., 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 January 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2019 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@ksjewelrysstore.com, postmaster@kendrascott-us.com, postmaster@kendrascott-vip.com, postmaster@kendrascott-fl.com, postmaster@kendrascott-de.com, postmaster@kendrascott-austin.com, postmaster@kendrascott-ca.com, postmaster@kendrascott-online.com, postmaster@kendrascott-shop.com, postmaster@kendrascott-store.com, postmaster@kendrascott-ar.com, postmaster@kendrascott-outlet.com, postmaster@kendrascott-jewelry.com, postmaster@kendrascott-gift.com, postmaster@kendrascott-ga.com, postmaster@kendrascott-dc.com, postmaster@kendrascott-ct.com, postmaster@kendrascott-co.com, postmaster@kendrascott-az.com, postmaster@kendravipscott.com. Also on January 18, 2019, 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 February 13, 2019, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant
is a prominent and well-known jewelry and accessory designer. Complainant has
rights in the KENDRA SCOTT and KS marks through its trademark registrations
with the United States Patent and Trademark Office (“USPTO”) (e.g.,
KENDRA SCOTT- Reg. No. 3,125,314, registered Aug. 8, 2006; KS- Reg. No.
4,927,238, registered Mar. 29, 2016). See Compl. Ex. D. Respondent’s <ksjewelrysstore.com>,
<kendrascott-us.com>, <kendrascott-vip.com>,
<kendrascott-fl.com>, <kendrascott-de.com>,
<kendrascott-austin.com>, <kendrascott-ca.com>,
<kendrascott-online.com>, <kendrascott-shop.com>,
<kendrascott-store.com>, <kendrascott-ar.com>,
<kendrascott-outlet.com>, <kendrascott-jewelry.com>,
<kendrascott-gift.com>, <kendrascott-ga.com>,
<kendrascott-dc.com>, <kendrascott-ct.com>,
<kendrascott-co.com>, <kendrascott-az.com>, and <kendravipscott.com>
domain names are confusingly similar to Complainant’s KENDRA SCOTT or KS
mark as the dispute domain names incorporate one of the marks, along with a
generic term (“shop,” “store,” “gift,” “online,” “vip,” “outlet,” and
“jewelry”), and/or a geographic term (“us,” “fl,” “de,” “austin,” “ca,” “ar,”
“ga,” “dc,” “ct,” “co,” and “az”), and a “.com” generic top-level domain
(“gTLD”).
Respondent has no rights or legitimate interests in the <ksjewelrysstore.com>, <kendrascott-us.com>, <kendrascott-vip.com>, <kendrascott-fl.com>, <kendrascott-de.com>, <kendrascott-austin.com>, <kendrascott-ca.com>, <kendrascott-online.com>, <kendrascott-shop.com>, <kendrascott-store.com>, <kendrascott-ar.com>, <kendrascott-outlet.com>, <kendrascott-jewelry.com>, <kendrascott-gift.com>, <kendrascott-ga.com>, <kendrascott-dc.com>, <kendrascott-ct.com>, <kendrascott-co.com>, <kendrascott-az.com>, and <kendravipscott.com> domain names. Respondent is not licensed or otherwise permitted to use Complainant’s KENDRA SCOTT or KS marks and is not commonly known by any of the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names, except the <kendravipscott.com> domain name, to pass off as Complainant in order to fraudulent sell jewelry, presumably as part of a phishing scheme. Respondent’s <kendravipscott.com> domain name currently resolves to an inactive website.
Respondent registered and uses the <ksjewelrysstore.com>, <kendrascott-us.com>, <kendrascott-vip.com>, <kendrascott-fl.com>, <kendrascott-de.com>, <kendrascott-austin.com>, <kendrascott-ca.com>, <kendrascott-online.com>, <kendrascott-shop.com>, <kendrascott-store.com>, <kendrascott-ar.com>, <kendrascott-outlet.com>, <kendrascott-jewelry.com>, <kendrascott-gift.com>, <kendrascott-ga.com>, <kendrascott-dc.com>, <kendrascott-ct.com>, <kendrascott-co.com>, <kendrascott-az.com>, and <kendravipscott.com> domain names in bad faith. Respondent, chen jian shan,” has demonstrated a pattern of bad faith registration as it has a history of adverse UDRP decisions. Additionally, Respondent attempts to attract, for commercial gain, users to the disputed domain names where it passes off in order to fraudulently sell jewelry, presumably as party of a credit card phishing scheme. Respondent also fails to actively use the <kendravipscott.com> domain name. Finally, Respondent was clearly aware of Complainant’s rights in the KENDRA SCOTT and KS marks prior to registering and subsequent use of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a prominent and well-known jewelry and accessory designer.
2. Complainant has established its trademark rights in the KENDRA SCOTT and KS marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., KENDRA SCOTT- Reg. No. 3,125,314, registered Aug. 8, 2006; KS- Reg. No. 4,927,238, registered Mar. 29, 2016).
3. Respondent registered the disputed domain names on the following dates:
|
<ksjewelrysstore.com> |
November 9, 2018 |
|
<kendrascott-us.com> |
November 29, 2018 |
|
<kendrascott-vip.com> |
December 1, 2018 |
|
<kendrascott-fl.com> |
December 3, 2018 |
|
<kendrascott-de.com> |
December 3, 2018 |
|
<kendrascott-austin.com> |
December 1, 2018 |
|
<kendrascott-ca.com> |
December 3, 2018 |
|
<kendrascott-online.com> |
November 29, 2018 |
|
<kendrascott-shop.com> |
November 29, 2018 |
|
<kendrascott-store.com> |
November 29, 2018 |
|
<kendrascott-ar.com> |
December 3, 2018 |
|
<kendrascott-outlet.com> |
December 1, 2018 |
|
<kendrascott-jewelry.com> |
December 3, 2018 |
|
<kendrascott-gift.com> |
December 3, 2018 |
|
<kendrascott-ga.com> |
December 3, 2018 |
|
<kendrascott-dc.com> |
December 3, 2018 |
|
<kendrascott-ct.com> |
December 3, 2018 |
|
<kendrascott-co.com> |
December 3, 2018 |
|
<kendrascott-az.com> |
December 3, 2018 |
|
<kendravipscott.com>
|
November 9, 2018 |
4. Respondent has caused the disputed domain names, except the <kendravipscott.com> domain name, to pass itself off as Complainant in order fraudulently to sell jewelry, presumably as part of a phishing scheme. Respondent’s <kendravipscott.com> domain name currently resolves to an inactive 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.”).
Preliminary Issue: Language of Proceeding
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent’s website available at the disputed domain names uses English characters and words therein, suggesting that Respondent is at least proficient in the English language. Further, Complainant is not conversant or proficient in the Chinese language and would incur delay and unnecessary costs to translate the documents.
Accordingly, and 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: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two Complainants in this matter are Kendra Scott (“Kendra”) and Kendra Scott, LLC (“KS LLC”). Complainant KS LLC is the exclusive licensee of the KENDRA SCOTT, KENDRA, and KS marks, and Complainant Kendra is a prominent and well-known jewelry and accessory designer. In this matter, Complainants claim they share a specific common grievance against Respondent, and that it would be equitable and procedurally efficient to permit the joint Complaint.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding.
The Panel also determines that in this decision the Complainants will be collectively referred to as “Complainant.”
Preliminary Issue: 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 both respondents share the same email address, 944378197@qq.com, and reside in the same Chinese province of Fujian. Further, the disputed domain names appear to display identical websites, except for <kendravipscott.com>, and all of the disputed domain names utilize the same registrar. Finally, all disputed domain names were registered within about one month of each other.
Accordingly, the Panel determines that the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and that the Complaint may therefore proceed in its present form.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the KENDRA SCOTT and KS marks based upon registration of the mark with the USPTO (e.g., KENDRA SCOTT- Reg. No. 3,125,314, registered Aug. 8, 2006; KS- Reg. No. 4,927,238, registered Mar. 29, 2016). See Compl. Ex. D. Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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). The Panel therefore holds that Complainant’s registration of the KENDRA SCOTT and KS marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s KENDRA SCOTT and KS marks. Complainant argues Respondent’s disputed domain names are confusingly similar to the KENDRA SCOTT and KS marks. Specifically, Complainant argues Respondent merely adds a generic term (“shop,” “store,” “gift,” “online,” “vip,” “outlet,” and “jewelry”), and/or a geographic term (“us,” “fl,” “de,” “austin,” “ca,” “ar,” “ga,” “dc,” “ct,” “co,” and “az”), and a “.com” gTLD to either the KS or KENDRA SCOTT mark. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). The Panel therefore determines the disputed domain names are confusingly similar to the KENDRA SCOTT and KS marks per Policy ¶ 4(a)(i).
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 names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
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 KENDRA SCOTT and KS trademarks and to use them in its domain names, adding a generic term (“shop,” “store,” “gift,” “online,” “vip,” “outlet,” and “jewelry”), and/or a geographic term (“us,” “fl,” “de,” “austin,” “ca,” “ar,” “ga,” “dc,” “ct,” “co,” and “az”), that does not negate the confusing similarity with Complainant’s trademarks;
(b) Respondent registered the disputed domain names on the following dates:
|
<ksjewelrysstore.com> |
November 9, 2018 |
|
<kendrascott-us.com> |
November 29, 2018 |
|
<kendrascott-vip.com> |
December 1, 2018 |
|
<kendrascott-fl.com> |
December 3, 2018 |
|
<kendrascott-de.com> |
December 3, 2018 |
|
<kendrascott-austin.com> |
December 1, 2018 |
|
<kendrascott-ca.com> |
December 3, 2018 |
|
<kendrascott-online.com> |
November 29, 2018 |
|
<kendrascott-shop.com> |
November 29, 2018 |
|
<kendrascott-store.com> |
November 29, 2018 |
|
<kendrascott-ar.com> |
December 3, 2018 |
|
<kendrascott-outlet.com> |
December 1, 2018 |
|
<kendrascott-jewelry.com> |
December 3, 2018 |
|
<kendrascott-gift.com> |
December 3, 2018 |
|
<kendrascott-ga.com> |
December 3, 2018 |
|
<kendrascott-dc.com> |
December 3, 2018 |
|
<kendrascott-ct.com> |
December 3, 2018 |
|
<kendrascott-co.com> |
December 3, 2018 |
|
<kendrascott-az.com> |
December 3, 2018 |
|
<kendravipscott.com>
|
November 9, 2018 |
(c) Respondent has used the disputed domain names, except the <kendravipscott.com> domain name, to pass itself off as Complainant in order fraudulently to sell jewelry, presumably as part of a phishing scheme. Respondent’s <kendravipscott.com> domain name currently resolves to an inactive website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the KENDRA SCOTT or KS mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain names as either “Jian Shan Chen” or “Guo Cai Lin,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s marks. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names;
(f) Complainant argues Respondent’s lack of rights or legitimate interests in the disputed domain names is demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent uses the disputed domain names, except for the <kendravipscott.com> domain name, to pass itself off as Complainant to offer fraudulent goods and in furtherance of a credit card, phishing scheme. Use of a disputed domain name to pass off as a complainant, either to offer fraudulent products and/or phish for users’ sensitive information is not generally considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant contends Respondent uses the disputed domain names to feature images from Complainant’s website, purporting to offer similar products at significantly reduced prices. Further, Complainant argues that it made a test purchase to confirm the fraudulent activity and several of its customers also confirmed this activity. Complainant provides comparison photographs from Complainant and Respondent’s website in support of its contentions. See Compl. Exs. A, C, and E. Therefore, the Panel agrees with Complainant and finds that Respondent does not use the disputed domain names for a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant submits Respondent’s inactive holding of the <kendravipscott.com> domain name indicates it does not have rights or legitimate interests in the domain name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel considers that Complainant’s submission that Respondent does not have rights or legitimate interests in the domain name and all the circumstances are sufficient under a Policy ¶¶ 4(c)(i) or (iii) analysis.
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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent’s registration of the disputed domain names is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of prior adverse UDRP decisions and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant includes a prior UDRP case where Respondent, “Jian Shan Chen,” was ordered to transfer ownership of domain names (ALO, LLC v. chen jian shan, FA1819707 (Forum Jan. 14, 2019). See Compl. p. 9. The Panel therefore determines that the registration and use of the disputed domain names is part of a pattern and is evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant claims Respondent’s use of the disputed domain names, except the <kendravipscott.com> domain name, to pass itself off as Complainant in furtherance of a phishing scheme demonstrates that Respondent registered and used the domain names in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to phish for users’ information may be behavior indicative of bad faith registration and use per Policy ¶ 4(b) (iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). The Panel recalls Complainant’s contentions that Respondent uses the disputed domain names to feature images from Complainant’s website, purporting to offer similar products at significantly reduced prices. Further, Complainant argues that it made a test purchase to confirm the fraudulent activity and several of its customers also confirmed this activity. Complainant provides comparison photographs from Complainant and Respondent’s website in support of its contentions. See Compl. Exs. A, C, and E. The Panel therefore finds Respondent registered and used the domain names in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant submits that Respondent’s failure to use the <kendravipscott.com> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel determines that in view of Complainant’s submission and all the circumstances, Respondent inactively holds the domain name which is evidence of its bad faith per Policy ¶ 4(a)(iii).
Fourthly, Complainant contends that in light of the fame and notoriety of Complainant's KENDRA SCOTT and KS marks, Respondent was well aware of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are normally not successful, because UDRP decisions decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under 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.”). Complainant further submits that Respondent’s use of the domain names to copy photographs of Complainant’s products and models from its website indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the domain names in bad faith.
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 names using the KENDRA SCOTT and KS marks and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them 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 <ksjewelrysstore.com>, <kendrascott-us.com>, <kendrascott-vip.com>, <kendrascott-fl.com>, <kendrascott-de.com>, <kendrascott-austin.com>, <kendrascott-ca.com>, <kendrascott-online.com>, <kendrascott-shop.com>, <kendrascott-store.com>, <kendrascott-ar.com>, <kendrascott-outlet.com>, <kendrascott-jewelry.com>, <kendrascott-gift.com>, <kendrascott-ga.com>, <kendrascott-dc.com>, <kendrascott-ct.com>, <kendrascott-co.com>, <kendrascott-az.com>, and <kendravipscott.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 14, 2019
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