Kendra Scott and Kendra Scott, LLC v. Donald Simkins
Claim Number: FA1705001733031
Complainant is Kendra Scott and Kendra Scott, LLC (“Complainant”), represented by Rebecca R. McCurry of Pirkey Barber PLLC, Texas, USA. Respondent is Donald Simkins (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kendrascott-necklaces.com> (‘the Domain Name’) registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2017; the Forum received payment on May 24, 2017.
On May 25, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <kendrascott-necklaces.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 has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 May 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@kendrascott-necklaces.com. Also on May 26, 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 June 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s submissions can be summarized as follows:
Complainant runs a well known jewelry and accessory designer business and owns the KENDRA SCOTT trade mark in the United States, first registered in 2006 for jewelry.
The Domain Name is identical or confusingly similar to Complainant’s distinctive and well known KENDRA SCOTT mark incorporating it in its entirety, merely tacking on a hyphen, the generic term ‘necklaces ‘and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark and, in fact, since Complainant sells jewelry enhances the likelihood of confusion.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name or licensed or authorized by Complainant to use it.
Respondent is using the Domain Name in connection with fraudulent sale of jewelry which is not a bona fide offering of goods and services or legitimate non commercial or fair use. The model and product images on Respondent’s site have been copied from one of Complainant’s authorised resellers. A test purchase has been ordered, but has not arrived and the confirmation e mail came from a company widely associated with fraudulent activity. Complainant has now had the site taken down via the Internet Service Provider.
The Domain Name registered in 2017 resolves to a web site that purports to sell jewelry and prominently features the KENDRA SCOTT mark as well as a photograph of the designer Kendra Scott owned by Complainant. Complainant has had rights in the KENDRA SCOTT trademark for at least a decade before registration of the Domain Name. The fact that Respondent has copied a photograph of Kendra Scott shows Respondent was aware of Complainant and its business at the time of registration.
Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent's site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship affiliation or endorsement of Respondent’s web site in violation of Policy 4 (b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant runs a well known jewelry and accessory designer business and owns the KENDRA SCOTT trade mark in the United States of America (where Respondent is based) which was first registered in 2006 for jewelry, with first use in commerce recorded as 2002.
The Domain Name registered in 2017 has been used fraudulently to offer jewelry under the KENDRA SCOTT name.
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 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, the owner of a jewelry design business, is the owner of the KENDRA SCOTT trademark registered , inter alia, in the United States for jewelry with first use in commerce recorded as 2002.
The Domain Name consists of a name identical to Complainant's registered mark KENDRA SCOTT plus a hyphen, the generic word ‘necklaces’ and the gTLD .com. The addition of this hyphen and generic word does not serve to distinguish the Domain Name from Complainant's KENDRA SCOTT mark. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July 1, 20113)(The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to 4 (a)(i)); see also Morgan Stanley v Eugene Sikorsky/private person, FA 1651901 (Forum Jan 19, 2016)(concluding that the addition of a generic term and top level domain to a trade mark is inconsequential under a Policy (a)(i) analysis).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Respondent is not commonly known by the Domain Name and has not been authorised to use the KENDRA SCOTT mark by Complainant.
It is clear from the content of the site including a photograph of Kendra Scott that Respondent was aware of the significance of the name "KENDRA SCOTT" at the time of registration. The usage is not fair as the site uses Complainant’s photograph and does not make it clear that there is no commercial connection of the site with Complainant. This use is clearly deceptive and confusing. There is also some evidence that the site may be a site where goods are not provided once ordered and paid for. As such it cannot amount to the bona fide offering of goods and services. Respondent has not answered this Complaint and such conduct cannot be legitimate. As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant alleges that Respondent's use of the site is commercial and he is using it to make a profit from products which compete with Complainant in a deceptive manner. The content of Respondent’s web site with a photogragh of the designer in Complainant’s business Kendra Scott makes it clear that it was aware of Complainant’s rights at the time of registration. The use of Complainant’s photograph would cause people to associate the website at the Domain Name and the products on it with Complainant and its business and goods and cause members of the public to believe the site was authorised and offers genuine goods. There is some evidence that once paid for the goods ordered by customers do not arrive.
Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site and the products featured on it under Policy 4 (b)(iv). The use is also disruptive to Complainant’s business and on the face of it the site attached to the Domain Name appears to be a competing site within the provisions of Policy 4 (b)(iii).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Policy 4 (b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kendrascott-necklaces.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne , Panelist
Dated: June 22, 2017
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