Kendra Scott / Kendra Scott, LLC v. Dexter Reading / xiang dao xin xi ji shu you xiang gong si / abcyel abcyel / fang bin feng / cyl / ah bay / Bjorn Schmid
Claim Number: FA1808001801423
Complainant is Kendra Scott / Kendra Scott, LLC (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Dexter Reading / xiang dao xin xi ji shu you xiang gong si / abcyel abcyel / fang bin feng / cyl / ah bay / Bjorn Schmid (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vipksshop.com>, <shopkendra.com>, <ksonsales.com>, <kendrascottclearance.com>, <vipksstore.com>, <ksshopus.com>, <kendrascottdeal.com>, <kscotjewel.com>, <ksjewelrystore.com>, <bestkssale.com>, <kendrascottonsale.com>, and <ksusjewel.com>, registered with Godaddy.Com, LLC and Namesilo, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2018; the Forum received payment on August 15, 2018.
On August 16, 2018, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <ksonsales.com> and <kendrascottonsale.com> domain names are registered with Godaddy.Com, LLC, and that Respondent is the current registrant of the names. On the same date Namesilo, LLC confirmed by e-mail to the Forum that the <vipksshop.com>, <shopkendra.com>, <kendrascottclearance.com>, <vipksstore.com>, <ksshopus.com>, <kendrascottdeal.com>, <kscotjewel.com>, <ksjewelrystore.com>, <bestkssale.com>, and <ksusjewel.com> domain names are registered with Namesilo, LLC and that Respondent is the current registrant of the names. Godaddy.Com, LLC and Namesilo, LLC have verified that Respondent is bound by the respective Godaddy.Com, LLC and Namesilo, LLC registration agreements 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 August 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@vipksshop.com, postmaster@shopkendra.com, postmaster@ksonsales.com, postmaster@kendrascottclearance.com, postmaster@vipksstore.com, postmaster@ksshopus.com, postmaster@kendrascottdeal.com, postmaster@kscotjewel.com, postmaster@ksjewelrystore.com, postmaster@bestkssale.com, postmaster@kendrascottonsale.com, and postmaster@ksusjewel.com. Also on August 22, 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 September 14, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Preliminary Issue: Multiple Complainants
The Complaint filed in this proceeding identifies two separate complaining parties, Kendra Scott, an individual, and Kendra Scott, LLC. 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,” while 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.”
The Complaint recites that Kendra Scott is the registrant of the KENDRA SCOTT trademark and that Kendra Scott, LLC, is the exclusive licensee of that mark, so that they have a specific common grievance against Respondent. The Complaint further asserts that it would be equitable and efficient to permit them to proceed as a single complainant.
Supplemental Rule 1(e) allows multiple parties to proceed as one where they can show a sufficient link to one another. 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), a panel concluded that:
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.
Likewise, in Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), a panel treated two complaining parties as a single entity where both held rights in trademarks contained within disputed domain names. And, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum February 6, 2004), a panel found a sufficient link between two complainants where there was a license between them regarding use of a mark.
For this reason, and because Respondent does not contest any of the identified complainants’ contentions on this question, those parties-complainant will be referred to throughout this proceeding as a single “Complainant.”
Preliminary Issue: Multiple Respondents
The Complaint alleges that the entities controlling the disputed domain names are effectively the same person or entity, which is operating under several aliases, so that they should be treated in this proceeding as a single party-respondent. 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.”
In support of its request for treatment of the several putative domain name holders as one party-respondent, Complainant contends that all of the websites resolving from the disputed domain names mimic Complainant’s official website as it existed in May of 2018, and that all of the domain names were registered thereafter within less than two months of one another using the same registrar. Complainant further asserts that all of the disputed domain names contain identical content, including statements of a purported “Privacy Policy” and a “Shipping Policy.”
In light of these contentions, which none of the identified party-respondents denies, we conclude that a sufficient nexus has been shown to exist among all of the named party-respondents to justify that they be treated as a single party for all purposes in this proceeding, to be denominated “Respondent.”
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a prominent jewelry and fashion accessory designer.
Complainant holds a registration for the KENDRA SCOTT trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,125,314, registered August 8, 2006, renewed June 28, 2016.
Respondent registered the following domain names on the dates indicated for each of them:
|
vipksshop.com |
June 14, 2018 |
|
shopkendra.com |
May 31, 2018 |
|
ksonsales.com |
June 20, 2018 |
|
kendrascottclearance.com |
July 1, 2018 |
|
vipksstore.com |
June 14, 2018 |
|
ksshopus.com |
June 14, 2018 |
|
kendrascottdeal.com |
May 29, 2018 |
|
kscotjewel.com |
July 21, 2018 |
|
ksjewelrystore.com |
July 10, 2018 |
|
bestkssale.com |
June 14, 2018 |
|
kendrascottonsale.com |
July 13, 2018 |
|
ksusjewel.com |
July 21, 2018 |
Each of the domain names is confusingly similar to Complainant’s KENDRA SCOTT mark.
Respondent has not been commonly known by any of the domain names.
Complainant has not authorized Respondent to use the KENDRA SCOTT mark in any way.
Respondent has failed to use the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Instead, Respondent uses the domain names to pass itself off as Complainant online while purporting to sell jewelry.
Respondent presumably employs the domain names to conduct a phishing scheme to collect Internet users’ credit card and other personal information.
Respondent lacks rights to and legitimate interests in the domain names.
Respondent had actual knowledge of Complainant’s rights in the KENDRA SCOTT mark prior to registration of the domain names.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain name were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 KENDRA SCOTT trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <vipksshop.com>, <ksonsales.com>, <vipksstore.com>, <ksshopus.com>, <ksjewelrystore.com>, <bestkssale.com> and <ksusjewel.com> domain names is confusingly similar to Complainant’s KENDRA SCOTT mark. Each of the domain names contains the letters “ks,” a common abbreviation of the mark, together with one of the generic terms “vip,” “shop,” “on,” “sales,” “store,” “best,” “sale,” “jewelry,” and “jewel,” which can be taken to relate to various aspects of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” Likewise, each of the domain names <shopkendra.com>, <kendrascottdeal.com>, <kendrascottonsale.com>, and <kendrascottclearance.com> is confusingly similar to Complainant’s mark because they contain either the entire KENDRA SCOTT mark or a prominent part of it, with the addition of one of the generic terms “shop,” “clearance,” “deal” and “on sale,” all of which can be taken to relate to an aspect of Complainant’s business, plus the gTLD “com.” As to the <kscotjewel.com> domain name, it is confusingly similar to the KENDRA SCOTT mark because it contains “kscot,” a readily recognizable misspelling of an abbreviation of the mark, together with the generic term “jewel,” which describes Complainant’s business, plus the gTLD “.com.” Finally, the geographic abbreviation “us,” for “United States,” is also added to the mark in the <ksusjewel.com> and <ksshopus.com> domain names.
These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Sterling Jewelers Inc. v. KAY KAY YAN, FA 1542616 (Forum March 17, 2014) (finding that a respondent’s <kisskay.com> domain name was confusingly similar to a UDRP complainant’s KAY and EVERY KISS BEGINS WITH KAY marks because it was a mere abbreviation of the combined marks).
See also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding that the addition of a generic term and gTLD to the mark of another in creating a domain name was insufficient to distinguish one from the other under Policy ¶ 4(a)(i)). As to the latter of these conclusions, this is because every domain name requires a gTLD.
Further see Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum September 28, 2017):
Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusing similarity under a Policy ¶4(a)(i) analysis.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the contested domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)–(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged domain names, and that Complainant has not authorized Respondent to use the KENDRA SCOTT mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain names variously as “Bjorn Schmid” or “fang bin feng” or “Dexter Reading” or “cyl” or “abcyel abcyel,” none of which resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the challenged domain names to pass itself off as Complainant online presumably in furtherance of a “phishing” scheme designed to collect Internet users’ credit card and other personal information for the illicit benefit of Respondent. This employment is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain names as provided in those subsections of the Policy. See, for example, 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.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the challenged domain names to pass itself off as Complainant online in furtherance of a fraudulent phishing scheme. It should go without saying that such a use of the domain names demonstrates bad faith in the registration and use of the domain names. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using a disputed domain name as an e-mail address to pass itself off as a UDRP complainant in furtherance of a phishing scheme is evidence of bad faith registration and use under the standards of the Policy).
It is also abundantly clear from the record before us that Respondent knew of Complainant and its rights in the KENDRA SCOTT trademark when it registered the twelve (12) disputed domain names. This too shows Respondent’s bad faith in registering those domain names. See, for example, Google Inc. v. Ahmed Humood, FA1411001591796 (Forum January 7, 2015) finding bad faith registration of a domain name where:
Respondent had actual knowledge of Complainant’s mark at the time of domain name registration ….
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <vipksshop.com>, <shopkendra.com>, <ksonsales.com>, <kendrascottclearance.com>, <vipksstore.com>, <ksshopus.com>, <kendrascottdeal.com>, <kscotjewel.com>, <ksjewelrystore.com>, <bestkssale.com>, <kendrascottonsale.com>, and <ksusjewel.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 19, 2018
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