Alex and Ani, LLC v. luo liang
Claim Number: FA1607001683317
Complainant is Alex and Ani, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Luo Liang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alexandanioutlet.co>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 11, 2016; the Forum received payment on July 11, 2016.
On July 14, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <alexandanioutlet.co> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 July 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 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@alexandanioutlet.co. Also on July 14, 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 August 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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, Alex and Ani, LLC., use the ALEX AND ANI mark in connection with its business as a retailer of various goods and services including jewelry, cosmetics, and candles. Complainant’s rights in the ALEX AND ANI mark stem from registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,549,848, registered Mar. 19, 2002). Respondent’s domain <alexandanioutlet.co> is confusingly similar to the ALEX AND ANI mark as the domain includes the entire ALEX AND ANI mark and merely differs through the addition of the generic term “outlet,” and the country code top-level domain (“ccTLD”) “.co.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name based on WHOIS information and a lack of contradictory information. Additionally, Respondent’s use of the disputed domain name, to sell jewelry that competes with Complainant’s products, is not a bona fide offering of goods and services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent is diverting internet consumers to its own domain and disrupts Complainant’s business through selling counterfeit goods on said domain. Respondent is also presumably attempting to profit from Internet users’ confusion created by the similarity of the disputed domain name and the ALEX AND ANI mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Alex and Ani, LLC of Cranston, RI, USA. Complainant is the owner of various domestic and international registrations for the mark ALEX AND ANI which it has continuously used since at least as early as 1993 in connection with its sales of various consumer goods such as sunglasses, cosmetics, candles, bags and wallets, as well as other clothing accessories and related items.
Respondent is Luo Lang of Sichuan, China. Respondent’s registrar’s address is listed as Mumbai, India. The Panel notes that the disputed domain name was created on or about June 3, 2016.
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 to have rights in the ALEX AND ANI mark based on registration of the mark with the USPTO (e.g., Reg. No. 2,549,848, registered Mar. 19, 2002). Past panels have found that registration of a mark with the USPTO is sufficient to demonstrate rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s domain <alexandanioutlet.co> is identical or confusingly similar to the ALEX AND ANI mark in which Complainant asserts rights. Respondent’s domain appears to include the entire ALEX AND ANI mark and adds the ccTLD “.co” and the generic term “outlet.” Prior panels have found that the presence of a ccTLD does not affect the similarity between the mark and the domain name. See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). Similarly, the addition of a generic term to a mark in a domain has not been seen as a distinguishing feature for purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The Panel here finds that Respondent’s domain is confusingly similar to the <alexandanioutlet.co> for purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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 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). The Complainant has met this burden.
Complainant asserts that Respondent has not been commonly known by the disputed domain name or legitimatly affiliated with Complainant in any manner. WHOIS information associated with the domain name identifies Respondent as, “luo liang,” which does not resemble the disputed domain. Previous panels have found that a respondent is not commonly known by a disputed domain based on WHOIS information and a lack of contradictory information. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel here concludes that Respondent is not commonly known by the disputed domain name.
Complainant next claims that Respondent’s use of the disputed domain does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a website that offers products for sale that Complainant claims are counterfeit versions of Complainant’s own products. Complainant includes proof of a purchase from Respondent’s website, the product purchased therefrom, and the differences which lead Complainant to believe that the product is fake. Previous panels have found that using a confusingly similar domain to sell counterfeit goods is not a bona fide offering of goods or services 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). The Panel here finds that Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has shown bad faith registration and use through diverting internet consumers to the website that resolves from Respondent’s domain and disrupts Complainant’s business through selling counterfeit goods. As stated previously, Respondent’s domain resolves to a website where counterfeit versions of Complainant’s products are offered. Prior panels have found that registration of a confusingly similar domain to sell counterfeit products disrupts a complainant’s business 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).”). Panels have also previously found that offering counterfeit goods via a confusingly similar domain demonstrates a bad faith attempt to confuse and attract Internet users for profit 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). The Panel here finds that Respondent has registered and used the disputed domain in bad faith under Policies ¶ 4(b)(iii) or ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <alexandanioutlet.co> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 24, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page