Kurk Wasserman Consulting, L.L.C. v. ming li
Claim Number: FA1804001782613
Complainant is Kurk Wasserman Consulting, L.L.C. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is ming li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lilashserum.us>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 19, 2018; the Forum received payment on April 19, 2018.
On April 20, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lilashserum.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2018 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.us. Also on April 20, 2018, 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 May 15, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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, Kurk Wasserman Consulting, LLC, uses the LILASH mark in connection with the development, manufacture, and sale of eyelash serum and other eyelash enhancement products. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,920,521, registered Feb. 15, 2011). Respondent’s <lilashserum.us> domain name is confusingly similar to Complainant’s mark as Respondent incorporates the mark in its entirety and merely adds the descriptive term “serum” and a “.us” country code top-level domain (“ccTLD”) to the mark.
Respondent has no rights or legitimate interests in the <lilashserum.us> domain name. Complainant has not authorized Respondent to use Complainant’s LILASH mark. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, Respondent uses the <lilashserum.us> domain name to divert Internet users to a website offering counterfeit products. In addition, Respondent attempts to pass off as Complainant to mislead the public into believing Respondent is Complainant. By misleading Internet users, Respondent presumably attempts to phish for users’ personal and financial information by collecting information from customers seeking Complainant’s products.
Respondent has registered and is using the <lilashserum.us> domain name in bad faith. Respondent has engaged in a pattern of bad faith registration. Respondent intentionally attempts to attract, for commercial gain, users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the links contained therein. Finally, Respondent registered the <lilashserum.us> domain name with actual knowledge of Complainant’s rights in the LILASH mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Kurk Wasserman Consulting, LLC, uses the LILASH mark connection with the development, manufacture, and sale of eyelash serum and other eyelash enhancement products. Complainant has rights in the mark based upon registration with the USPTO (e.g., Reg. No. 3,920,521, registered Feb. 15, 2011). Respondent’s <lilashserum.us> domain name is confusingly similar to Complainant’s mark.
Respondent created the <lilashserum.us> domain name on November 17, 2016.
Respondent has no rights or legitimate interests in the <lilashserum.us> domain name. Respondent uses the <lilashserum.us> domain name to divert Internet users to a website offering counterfeit products. In addition, Respondent attempts to pass off as Complainant to mislead the public into believing Respondent is Complainant. By misleading Internet users, Respondent presumably attempts to phish for users’ personal and financial information by collecting information from customers seeking Complainant’s products.
Respondent has registered and is using the <lilashserum.us> 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 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 has rights in the LILASH mark under Policy ¶ 4(a)(i) based upon registration with the USPTO. Respondent’s <lilashserum.us> domain name is confusingly similar to the LILASH mark as Respondent merely adds the descriptive term “serum” and the “.us” ccTLD to the mark.
Respondent has no rights or legitimate interests in the <lilashserum.us> domain name. Complainant has not authorized or licensed Respondent to use Complainant’s LILASH mark. The WHOIS information of record identifies the registrant of the domain name as “ming li.” Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum September 17, 2014) (concluding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Navistar International Corporation v. N Rahmany, FA 1620789 (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).
Respondent has failed to use the <lilashserum.us> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the <lilashserum.us> domain name to pass off as Complainant and resolve to a site offering counterfeit versions of Complainant’s products for sale. See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Here, Respondent’s website purports to sell LILASH branded product which appears to be counterfeit and at greatly reduced prices compared to genuine LILASH products.
Furthermore, Respondent appears to use the domain name in connection with a fraudulent phishing scheme. Use of a domain name to fraudulently obtain Internet users’ personal and financial information is not a bona fide offering or fair use under Policy ¶¶ 4(c)(ii) & (iv). See Virtu Financial Operating, LLC v. Lester Lomax, FA 1580464 (Forum November 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website).
Respondent has engaged in a pattern of bad faith registration under Policy ¶ 4(b)(ii). A respondent’s involvement in prior adverse UDRP decisions may establish a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA 1464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). In two previous cases between Complainant and Respondent, panels have transferred domain names confusingly similar to Complainant’s LILASH mark. See Kurk Wasserman Consulting, L.L.C. v. ming Ii / sunny mgt / sunny Lee, FA 1729709 (Forum June 10, 2017) and Kurk Wasserman Consulting, L.L.C. v. Sunny Lee, gino yu, FA 1684505 (Forum August 25, 2016).
Respondent uses the <lilashserum.us> domain name to pass off as Complainant for commercial gain. Respondent’s resolving website offers counterfeit versions of Complainant’s products for sale at prices much lower than the price of Complainant’s genuine products. Therefore, Respondent registered and uses the <lilashserum.us> domain name in bad faith under 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.”).
Respondent had actual knowledge of Complainant’s rights in the LILASH mark when it registered the <lilashserum.us> domain. Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii). Therefore, Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”).
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lilashserum.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 29, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page