Alex and Ani, LLC v. Patrick Lissone
Claim Number: FA1709001747483
Complainant is Alex and Ani, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Patrick Lissone (“Respondent”), Peoples Republic of China
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alexandanius.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist here.
Complainant submitted a Complaint to the Forum electronically September 5, 2017; the Forum received payment September 5, 2017.
On September 6, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <alexandanius.com> 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 verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 2017, 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@alexandanius.com. Also on September 6, 2017, 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 September 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson, to sit here as Panelist.
Having reviewed the communications record, the Administrative Panel (the "Panel") finds that the Forum 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’s Allegations in This Proceeding:
Complainant owns and operates a retail store selling jewelry, cosmetics, candles, leather goods and other fashion accessories and products. Complainant registered the ALEX AND ANI mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,871,699, registered Sept. 23, 2014). See Compl. Ex. E (Complainant’s certificates of trademark registration). Respondent’s <alexandanius.com> is confusingly similar to Complainant’s mark because it incorporates the mark in its entirety, removes the spacing within the mark, adds the generic term “us,” and the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <alexandanius.com> domain name. Respondent is not sponsored or affiliated with Complainant and is not commonly known by the disputed domain name. Respondent uses the <alexandanius.com> domain name to sell counterfeit versions of Complainant’s products. See Compl. Attached Ex. H (Screenshots of the resolving website for the disputed domain name).
Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business by diverting customers to Respondent’s website. Respondent profits from this confusion and profits as a result of selling products at lower prices. Respondent had actual knowledge of Complainant’s mark. Respondent has failed to respond to Complainant’s cease and desist letters.
B. Respondent’s Contentions in this Proceeding:
Respondent did not submit a Response. The Panel notes that Respondent registered <alexandanius.com> June 19, 2017. See Compl. Ex. I (WHOIS information for the disputed domain name).
Complainant established rights and legitimate interests in the disputed domain name and the mark contained within it.
Respondent has no such rights or legitimate interests in the mark or domain name.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant owns and operates a retail store selling jewelry, cosmetics, candles, leather goods and other fashion accessories and products. Complainant registered the ALEX AND ANI mark with the USPTO (e.g., Reg. No. 4,871,699, registered Sept. 23, 2014). See Compl. Ex. E. Generally USPTO registrations are sufficient to show rights in a 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). Therefore, the Panel finds that Complainant’s registration with USPTO shows rights in the ALEX AND ANI mark.
Complainant asserts Respondent’s <alexandanius.com> is confusingly similar to Complainant’s ALEX AND ANI mark as it incorporates the mark in its entirety, removes the spacing within the mark, and adds the generic term “us” as well as the “.com” gTLD. The removal of spacing from a complainant’s mark does not distinguish a domain name in a Policy ¶ 4(a)(i) analysis. Addition of a generic term and a gTLD does not distinguish a confusingly similar disputed domain name pursuant to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel therefore finds that Respondent’s domain name is confusingly similar to Complainant’s mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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), and then the burden of proof shifts to Respondent to show it does have such 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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the <alexandanius.com> domain name. Where no Response is filed, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Patrick Lissone” as the registrant. See Compl., at Attached Ex. I. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the ALEX AND ANI mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent was never legitimately affiliated with Complainant, was never known by the disputed domain name prior to its registration, and that Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <alexandanius.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant argues, Respondent uses the ALEX AND ANI mark in its <alexandanius.com> domain name to list and sell what appear to be counterfeit products. The unauthorized selling of a complainants’ products, whether real or counterfeit is not a bona fide offering of goods or service 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 services, 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). Complainant asserts that Respondent sells jewelry that contains Complainant’s mark at a price lower than Complainant’s recommended retail price and that Complainant has not authorized Respondent’s use of the ALEX AND ANI mark. See Compl. Ex. H (Screenshot of the resolving website for the disputed domain name). The Panel therefore finds that Respondent failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds Respondent has no rights or legitimate interests in the disputed domain name containing Complainant’s protected mark or the mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant first asserts that Respondent registered and is using the disputed domain name to disrupt Complainant’s business through the unauthorized sale of counterfeit products. Use of a disputed domain name to sell counterfeit versions of a product offered by a complainant demonstrates bad faith use pursuant to Policy ¶ 4(b)(iii). See Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (Forum July 10, 2015) (“Use of a domain name to offer counterfeit goods does consist of bad faith under Policy ¶ 4(b)(iii).”). Complainant argues that Respondent offers jewelry for sale that bears Complainant’s ALEX AND ANI mark. See Compl. Ex. H. The Panel finds Respondent used the <alexandanius.com> in bad faith pursuant to Policy ¶ 4(b)(iii).
Next, Complainant asserts that Respondent commercially gains from the confusion created suggesting source, sponsorship, or affiliation with Complainant. Sale of counterfeit products to create confusion and commercial gain from said confusion supports a finding of bad faith use pursuant to Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products, and thus showed Policy ¶ 4(b)(iv) bad faith). Complainant asserts that Respondent sells products bearing the ALEX AND ANI mark without Complainant’s authorization or license. See Compl. Ex. H. The Panel finds with Complainant that Respondent acted in bad faith using a Policy ¶ 4(b)(iv) analysis.
Complainant further argues Respondent likely had actual notice of the mark, shown through the registration of the disputed domain name and sales of counterfeit versions of Complainant’s products. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines 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 finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as shown through the nominal use of Complainant’s name and mark and the sale of Complainant’s products and/or counterfeit versions of Complainant’s products, both without permission. Such actual knowledge supports findings of bad faith registration and use under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the ALEX AND ANI mark based upon the disputed domain name’s use of the mark, the similar resolving website to that of Complainant’s, and the sale of counterfeit versions of Complainant’s’ jewelry products. See Compl. Ex. H. The Panel agrees with Complainant and finds that Respondent has actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant asserts Respondent acted in bad faith under the policy by failing to respond to cease-and-desist letters. Failure to respond to a cease-and-desist letter constitutes bad faith under Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant asserts Respondent failed to respond to the letter sent on September 1, 2017. See Compl. Ex. L. The Panel agrees and finds Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used a disputed domain name containing Complainant’s protected mark in bad faith; Complainant satisfied the elements of ICANN 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 <alexandanius.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 9, 2017
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