Alex and Ani LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1510001641959
Complainant is Alex and Ani LLC (“Complainant”), represented by William Schultz of Merchant & Gould, Minnesota, United States. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alexandaniwholesale.com>, registered with TLD Registrar Solutions Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2015; the Forum received payment on October 12, 2015.
On October 13, 2015, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <alexandaniwholesale.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions 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 October 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2015 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@alexandaniwholesale.com. Also on October 13, 2015, 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 November 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 uses the ALEX AND ANI mark in connection with the sale of products and services in the jewelry industry. Complainant has registered the ALEX AND ANI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,153,058, registered June 5, 2012), which demonstrates Complainant’s rights in its mark. The <alexandaniwholesale.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark and merely eliminates spacing between words and adds the generic term “wholesale” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent makes no active use of the disputed domain name.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent has engaged in a pattern of registering domain names that prevent Complainant from using those domain names for its legitimate business. Second, Respondent does not make an active use of the disputed domain name. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on February 16, 2015.
As the Respondent has failed to file a response in this matter, the Panel shall make its determination based on the unrebutted and reasonable assertions of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interest in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed 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(e), 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 (Nat. Arb. 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.”).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark. The disputed domain name is arrived at by merely adding the generic words “wholesale” and the gTLD .com to the trademark. Complainant has registered the ALEX AND ANI mark with the USPTO (e.g., Reg. No. 4,153,058, registered June 5, 2012). This USPTO registration demonstrates its rights in its mark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Respondent has no license or authorization to use Complainant’s mark. The WHOIS information merely lists “Domain Admin / Whois Privacy Corp.” as registrant. Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii
Respondent is apparently not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Rather, Respondent’s disputed domain name resolves to an inactive webpage. Attached Exhibit 14 for a screenshot of Respondent’s resolving webpage. Past panels have concluded that there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent fails to make an active use of a disputed domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) and, therefore, lacks any right or legitimate interest in or to the disputed domain name.
Complainant contends that Respondent has engaged in a pattern of registering domain names that prevent Complainant from using those domain names for its legitimate business. However, in order for Complainant to prevail on its argument under Policy ¶ 4(b)(ii), it must show that Respondent registered multiple domain names in this proceeding. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Because there is only one domain name in dispute in this proceeding, the Panel concludes that Complainant has failed to meet its burden of showing bad faith registration and use pursuant to Policy ¶ 4(b)(ii) regarding this claim.
Complainant does adequately demonstrate that Respondent does not make an active use of the disputed domain name. Attached Exhibit 14 for a screenshot of Respondent’s resolving webpage. Previous panels have found evidence of bad faith registration and use under Policy ¶ 4(a)(iii) where a respondent fails to make an active use of a disputed domain name. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). For this reason, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. In so arguing, Complainant asserts that Respondent’s use of Complainant’s copyrighted imagery on its other websites makes it clear that Respondent had knowledge of Complainant’s mark at the time it registered the disputed domain name. See Attached Exhibits 3, 5, 7, and 9 for screenshots of resolving webpages for additional disputed domain names registered by Respondent. Past panels have found evidence of bad faith registration where it was clear that a respondent was well-aware of a complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. 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, considering a totality of the circumstances, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark pursuant to 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 <alexandaniwholesale.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: November 9, 2015
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