Jewelry by Jamie, LLC v. 丹 吴
Claim Number: FA2301002027834
Complainant is Jewelry by Jamie, LLC (“Complainant”), represented by Anthony J. Bourget, USA. Respondent is 丹 吴 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <captivecollaus.com>, registered with Name.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on January 17, 2023; Forum received payment on January 17, 2023.
On January 17, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <captivecollaus.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.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 January 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2023 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@captivecollaus.com. Also on January 19, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant, Jewelry by Jamie, LLC, designs and sells jewelry through various online retail stores. Complainant has common law rights in the CAPTIVE COLLARS mark. The disputed domain name is confusingly similar to the CAPTIVE COLLARS mark as it merely misspells the mark.
ii) Respondent lacks rights and legitimate interests in the disputed domain name, as Respondent registered the disputed domain name after Complainant had acquired rights in the CAPTIVE COLLARS mark. Further, Respondent is not using the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is diverting Internet traffic away from Complainant, misleading and attracting potential customers for commercial gain through a site that passes itself off as Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent creates confusion as to the source or affiliation of the resolving site, attracting potential customers for commercial gain and disrupting Complainant’s business by copying Complainant’s website. Respondent also disrupts Complainant’s business by competing with Complainant.
B. Respondent
Respondent did not submit a response in this proceeding.
C. Complainant’s Additional Submission
i) On February 1, 2023, Complainant received a message, which shows a customer placed an order to purchase products via Registrant’s website associated with the disputed domain name. The customer apparently did not receive the merchandise, and inquired directly of Complainant, believing Complainant was the vendor of the order. The image pasted into the email message from the customer shows a receipt or screen received from captivecollaus.com. The receipt includes Complainant’s trademark CAPTIVE COLLARS and associated logo.
ii) On February 5, 2023, Complainant received another message, which shows a customer who noticed the counterfeit website associated with Respondent and the disputed domain name.
1. The disputed domain name was registered on August 4, 2022.
2. Complainant has established common law rights in the CAPTIVE COLLARS mark prior to the registration date of the disputed domain name.
3. The disputed domain name resolves to webpage that is nearly identical to Complainant’s website, extensively using the CAPTIVE COLLAR mark and logo (with the same stylization), layout, and colors. Respondent also appears to have copied Complainant’s product images directly.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims common law rights in the CAPTIVE COLLARS mark. A complainant may possess rights in a mark even in the absence of a registered trademark with a governmental authority through common law. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
To establish common law rights, a complainant must demonstrate that a mark has acquired sufficient secondary meaning, such as through long and extensive use, fame, and Internet presence. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). To support its claim, Complainant points to the long and extensive use of the CAPTIVE COLLARS mark in association with online jewelry retail. Complainant also notes that it has owned the domain name <captivecollars.com> since April 27, 2019. Although the WHOIS information for <captivecollars.com> lists a privacy service as the registrant, Complainant has provided an affidavit stating that it is the owner of the domain name. Complainant also puts forth evidence of its store on Etsy, in existence since 2017, that has made thousands of sales. Complainant also has a substantial media presence, with profiles on Facebook, Pinterest, Instagram, and TikTok, all of which use the CAPTIVE COLLARS mark. The Panel considers that Complainant has shown sufficient secondary meaning in the CAPTIVE COLLARS mark, and thus it finds that Complainant has established common law rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <captivecollaus.com> is confusingly similar to its CAPTIVE COLLARS mark since it simply misspells the mark, exchanging the letter “r” for “u”. When a disputed domain name merely misspells a mark, panels have found it insufficient to defeat a finding of confusing similarity. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). Given that Respondent merely misspells CAPTIVE COLLARS in the disputed domain name, the Panel finds it 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), 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”).
Complainant argues that Respondent seeks to divert Internet traffic and mislead potential customers to a site that copies Complainant’s mark, content, and images. Previous panels have found that use of a domain name to divert customers away from a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). In addition, panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name when a respondent diverts traffic to a site that imitates a complainant. See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); 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).”). In this case, Complainant provides evidence that the disputed domain name resolves to webpage that is nearly identical to Complainant’s website, extensively using the CAPTIVE COLLAR mark and logo (with the same stylization), layout, and colors. Respondent also appears to have copied Complainant’s product images directly. The Panel finds that Respondent appears to be passing off as Complainant and confusing customers by mimicking Complainant’s website, and thus it finds that Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues that Respondent registered and uses the disputed domain name in bad faith by hosting a website that copies Complainant and confuses customers as to the ownership or affiliation of the site. Previous panels have determined that a respondent’s use of a domain name to attract Internet traffic to a site that passes itself off as a complainant evinces bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Passing off has also been held as evidence of bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”). As noted above, Complainant prominently and extensively displays Complainant’s CAPTIVE COLLARS mark and logo, with the same colors and layout, as well as copied images. Therefore, the Panel finds that Respondent is passing off as Complainant and deceiving Internet users through use of the CAPTIVE COLLARS mark, and that Respondent registered and uses the disputed domain in bad faith under Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <captivecollaus.com> domain name be TRANSFERRED from Respondent to Complainant
Ho-Hyun Nahm, Esq., Panelist
Dated: February 18, 2023
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