Kurk Wasserman Consulting, L.L.C. v. Sunny Lee / gino yu
Claim Number: FA1607001684505
Complainant is Kurk Wasserman Consulting, L.L.C. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Sunny Lee / gino yu (“Respondent”), Trinidad and Tobago.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lilashserum.com>, <lilashsale.com>, <lilashuk.com>, and <lilashcanada.com>, registered with GoDaddy.com, LLC.
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 July 19, 2016; the Forum received payment on July 26, 2016.
On July 20, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lilashserum.com>, <lilashsale.com>, <lilashuk.com>, and <lilashcanada.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@lilashserum.com, postmaster@lilashsale.com, postmaster@lilashuk.com, and postmaster@lilashcanada.com. Also on July 26, 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 23, 2016, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant has used the LILASH mark in connection with its business developing, manufacturing, and selling eyelash serum and other eyelash enhancement products. Complainant has rights in the LILASH mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,920,521, registered Feb. 15, 2011). Respondent’s domain names, <lilashserum.com>, <lilashsale.com>, <lilashuk.com>, and <lilashcanada.com> are confusingly similar to the LILASH mark as the domain names include the entire mark and merely differ through the addition of the generic top-level domain (“gTLD”) “.com,” and a geographic, generic, or descriptive term.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not authorized to use the LILASH mark, is not affiliated with Complainant, and is not commonly known by the disputed domain name. Respondent’s use of the disputed domain, to use Complainant’s LILASH mark to sell Complainant’s products or counterfeit products, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and used the domain in bad faith. Respondent used the LILASH mark in the disputed domain names, without consent of Complainant, in a manner that confuses and misleads visitors to the website for Respondent’s own commercial gain. Additionally, Respondent was on actual notice of Complainant’s rights in the LILASH mark through extensive use of the marks and trademark registrations which predate the domain registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domains <lilashuk.com> and <lilashcanada.com> were created on May 16, 2016. The disputed domain names <lilashserum.com> and <lilashsale.com> were created on February 23, 2016.
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.”
The Panel finds that the Complainant has made an adequate showing that the disputed domain names are all commonly owned or controlled by the single Respondent herein.
The whois record for the <Lilashserum.com> and <Lilashsale.com> disputed domain names lists the registrant as Sunny Lee; however, the whois record for the <LilashUK.com> and <LilashCanada.com> disputed domain names list the registrant as Gino Yu. At first glance this would appear to suggest that these two sets of disputed domain names are owned by different people. However, all of the Disputed Domains follow the pattern of the distinctive word “Lilash” combined with some generic term. Each disputed domain name also all list an identical postal and email address for the registrant and use the same registrar. Further, and most telling, the websites which resolve from all four of the Disputed Domains (Exhibit F hereto) are identical. All of this indicates that the listed registrants of the Disputed Domains are an alias for a single person or entity.
As such, the Panel finds that a single proceeding under the Policy against apparent multiple respondents is appropriate.
The Panel finds that the each and every one of the disputed domain names is confusingly similar to Complainant’s valid and subsisting trademark, thatRespondent has no rights or legitimate interests in any of the disputed domain names, and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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.”).
The Panel finds that the disputed domain names are confusingly similar toComplainant’s valid and subsisting trademark. Complainant has adequately plead its rights in and to the trademark LILASH. Respondent arrives at the disputed domain names by taking this mark, in total, and appending generic top-level domain (“gTLD”) “.com,” and a geographic, generic, or descriptive term. Each and every one of these modifications is insufficient to distinguish the disputed domain names from the registered trademark of Complainant.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
The Panel finds that Respondent has no rights or legitimate interests in or to any of the disputed domain names. Respondent is not authorized to use the LILASH mark, affiliated with Complainant, and is not commonly known by the disputed domain name. WHOIS information associated with the disputed domain names identify Respondent as either, “gino yu,” or “sunny lee,” which do not resemble the disputed domain names. See Compl., at Attached Ex. B. As Respondent has failed to file a response in this matter, the Panel finds that there is no evidence in the record to indicate it is commonly known by the disputed domain names.
Further, Respondent has not used the disputed domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain names all resolve to identical websites which prominently use the LILASH mark and prompt users to order “Lilash Purified Eyelash Serum.” See Compl., at Attached Ex. F. Complainant believes that any products sold on the disputed domain names are counterfeit. See Compl., at 6. Panels have held that using another’s mark to sell counterfeit goods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
The Panel, therefore, finds that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain names.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Complainant argues that Respondent’s bad faith is evident by the fact that it uses the LILASH mark in the disputed domain names, without consent of Complainant, in a manner that confuses and misleads visitors to the website for Respondent’s own commercial gain. The disputed domain names resolve to a website that offers to sell LILASH branded products and repeatedly uses the LILASH mark. See Compl., at Attached Ex. F. Complainant claims that any sale of products on Respondent’s website using the LILASH mark would be counterfeit versions of Complainant’s own products. See Compl., at 7. Panels have held that using another’s mark to sell counterfeit products demonstrates bad faith 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, therefore, finds that Respondent has registered and is using the disputed domain in bad faith under Policy ¶ 4(b)(iv).
Complainant further argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the LILASH mark. Complainant argues that Respondent was on actual notice of Complainant’s rights in the LILASH mark through extensive use of the LILASH mark and trademark registrations which predate the domain registrations. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <lilashserum.com>, <lilashsale.com>, <lilashuk.com>, <lilashcanada.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: August 25, 2016
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