DECISION

 

Kendra Scott and Kendra Scott, LLC v. JAMS WHITE / Dexter Reading / c/o  xiang dao xin xi ji shu you xiang gong si / white jams

Claim Number: FA1805001789082

PARTIES

Complainant is Kendra Scott and Kendra Scott, LLC (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA.  Respondent is JAMS WHITE / Dexter Reading / c/o  xiang dao xin xi ji shu you xiang gong si / white jams (“Respondent”), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com>, <kdscottsale.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 29, 2018; the Forum received payment on May 29, 2018.

 

On May 31, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com>, <kdscottsale.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 June 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@kdscottshop.com, postmaster@kendrascottdiscount.com, postmaster@kdscottstore.com, postmaster@kdscottsale.com.  Also on June 4, 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 June 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

Preliminary Issue: Multiple Complainants

 

In the instant proceedings, there are two Complainants.  Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.”  The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.

 

There are two (2) Complainants in this matter: Kendra Scott and Kendra Scott, LLC Complainants simply claims that both Kendra Scott and Kendra Scott, LLC own numerous trademark registrations with United States Patent and Trademark Office and that it uses the marks in connection with the jewelry goods and related retail services. In addition, Complainants have a specific common grievance against Respondent, and it would be equitable and procedurally efficient to permit the joint-complaint.

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and shall treat them all as a single entity in this proceeding.

 

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.”  Complainant contends that all of the disputed domain names are under common control as all the resolving websites are identical and utilize the same logo. See Compl. Ex. A. Further, the disputed domain names were all registered within two (2) weeks of one another using the same registrar. Additionally, three of the four disputed domain names contain the same registrant name, email address, and identical addresses.

The Panel finds and determines the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant, Kendra Scott, is a prominent and well known jewelry and accessory designer. Complainant owns and has used the KENDRA SCOTT mark in connection with a highly successful line of jewelry and has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,125,314 registered Aug 8, 2006). See Compl. Ex. D. Respondent’s <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com> and <kdscottsale.com> domain names are confusingly similar to Complainant’s mark because the domain names contain the entire KENDRA SCOTT mark or the “kd” abbreviation of the word “kendra”, and adds a generic term (“shop, “discount,” “store,” or “sale”) and the “.com” generic top-level domain

(“gTLD”).

2.    Respondent lacks rights and legitimate interests in the <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com> and <kdscottsale.com> domain names because Respondent is not commonly known by the disputed domain names nor has Complainant authorized Respondent to use the KENDRA SCOTT mark in any way. Respondent has failed to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to pass off as Complainant in order to sell counterfeit jewelry. In addition, Respondent attempts to collect Internet users’ personal information.

3.    Respondent registered and uses the <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com> and <kdscottsale.com> domain names in bad faith. Respondent appears to have a history of bad faith registration selling counterfeit products under fake websites. In addition, Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent passes off as Complainant in order to sell counterfeit jewelry. Further, Respondent uses the disputed domain names to obtain Internet users’ credit card information. Finally, Respondent had actual knowledge of Complainant’s KENDRA SCOTT mark and business prior to registration and during subsequent use of the disputed domain names.

 

B.   Respondent:

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com> and<kdscottsale.com> domain names are confusingly similar to Complainant’s KENDRA SCOTT mark.

2.    Respondent does not have any rights or legitimate interests in the <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com> and<kdscottsale.com> domain names.

3.    Respondent registered or used the <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com> and<kdscottsale.com> domain names in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant has rights in the KENDRA SCOTT mark based upon registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish complainant’s rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its USPTO registration for the KENDRA SCOTT mark (e.g., Reg. No. 3,125,314 registered Aug 8, 2006). See Compl. Ex. D. Therefore, the Panel finds that Complainant established its’ rights in the mark according to Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com> and <kdscottsale.com> domain names are confusingly similar to Complainant’s mark because each contains the entire mark or an abbreviation of the mark, plus a generic term and a gTLD. The abbreviation of a mark, addition of a generic term, plus a gTLD are insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Sterling Jewelers Inc. v. KAY KAY YAN, FA 1542616 (Forum Mar. 17, 2014) (finding that Respondent’s <kisskay.com> domain name is confusingly similar to Complainant’s KAY and EVERY KISS BEGINS WITH KAY marks at it constitutes a mere abbreviation.); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Complainant contends that Respondent includes the entire KENDRA SCOTT mark as well as the abbreviation “kdscott” in the disputed domain names, plus the generic terms “shop,” “store,” “discount,” or “sale,” and the “.com” gTLD. Therefore, the Panel finds that the Respondent’s domain names are confusingly similar to Complainant’s mark under 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent lacks rights and legitimate interest in the <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com> and <kdscottsale.com> domain names because Respondent is not commonly known by the domain names nor has Complainant authorized the Respondent to use the names in any way. Where a response is lacking, relevant WHOIS information can be used to identify the respondent. 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). Additionally, lack of authorization from the complainant to use its’ mark may be further evidence that a respondent is not commonly known by a domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Complainant provides the relevant WHOIS information which identifies the Respondent as “Dexter Reading” under the <kendrascottdiscount.com> domain name, and “white jams” under the <kdscottstore.com> and <kdscottsale.com> domain names, and “JAMS WHITE” under the <kdscottshop.com> domain name. See Compl. Ex. E. Additionally, Complainant contends that Respondent was never authorized to use the KENDRA SCOTT mark in any fashion. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under a Policy ¶ 4(c)(ii) analysis.

 

Next, Complainant alleges that Respondent fails to use the <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com> and <kdscottsale.com> domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses the disputed domain name to pass off as Complainant in order to sell counterfeit products. Use of a domain name to pass off as complainant to promote the sale of counterfeit goods and services may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). 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, Complainant provides screenshots of the webpages associated with the disputed domain names which show actual photos taken from Complainant’s website offering the counterfeit jewelry for sale. See Compl. G. Therefore, the Panel finds the Respondent failed to use the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

Further, Complainant alleges that Respondent is attempting to phish for Internet users’ personal information. Passing off as a complainant to conduct a phishing scheme is further evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, Complainant contends that Respondent is attempting to gather Internet users’ personal information through a “Contact” page on the website of the disputed domain names. The contact form asks visitors to provide information such as their name and email address. See Compl. Ex. J. Therefore, the Panel agrees that Respondent failed to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).

 

Registration and Use in Bad Faith

Complainant claims Respondent registered and uses the <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com> and <kdscottsale.com> domain names in bad faith because Complainant argues Respondent engages in a pattern of bad faith registration by registering domain names which include famous, third party marks. Registration of other domain names which include third party trademarks, may be evidence of bad faith under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Complainant contends that  the email addresses associated with Respondent’s domain names are also associated with what appear to be fake websites selling products under the well-known marks YETI, POLO, HYDROFLASK, and FIFA, among others. Complainant provides a copy of an email received after making a test purchase on <kdscottshop.com> reflecting the two email addresses above. See Compl. Ex. I. In addition, Complainant provides printouts from Google showing the connection between the email addresses and the websites displaying the above marks. See Compl. Ex. K. Further, Complainant supplies printouts from the websites showing the vastly discounted goods offered under the above well-known brands. See Compl. Exs. A, G and H. Thus, the Panel finds Respondent engages in a pattern of bad faith registration per Policy ¶ 4(b)(ii). 

 

In addition, Respondent is intentionally attempting to attract—for commercial gain—Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s KENDRA SCOTT mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Using a confusingly similar domain name to mislead users for the purpose of offering counterfeit products can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Here, Complainant provides screenshots of the webpages associated with the disputed domain names which show actual photos taken from Complainant’s website offering the counterfeit jewelry for sale. See Compl. G. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant Policy ¶ 4(b)(iv).

 

In addition, Complainant asserts that Respondent impersonated Complainant to conduct a phishing scheme. Impersonating a complainant to conduct a phishing scheme is evidence of bad faith registration and use. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Here, Complainant contends that Respondent is attempting to gather Internet users’ personal information through a “Contact” page on the website of the disputed domain names. The contact form asks visitors to provide information such as their name and email address. See Compl. Ex. J. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant Policy ¶ 4(a)(iii).

 

Finally, Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s mark.  Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name per Policy ¶ 4(a)(iii).  See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.).  Complainant asserts that the fact Respondent registered the disputed domain names using Complainant’s famous mark coupled with the fact that Respondent attempts to sell Complainant’s counterfeit products, indicates that Respondent had actual knowledge of Complainant’s KENDRA SCOTT mark. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the KENDRA SCOTT mark when it registered and subsequently used the <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com> and <kdscottsale.com> domain names, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <kdscottshop.com>, <kendrascottdiscount.com>, <kdscottstore.com>, <kdscottsale.com> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  July 12, 2017