Kendra Scott and Kendra Scott, LLC v. Mike graves
Claim Number: FA1709001749714
Complainant is Kendra Scott and Kendra Scott, LLC (“Complainant”), represented by Rebecca R. McCurry of Pirkey Barber PLLC, Texas, USA. Respondent is Mike graves (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usedkendrascott.com>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 19, 2017; the Forum received payment on September 19, 2017.
On September 20, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <usedkendrascott.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@usedkendrascott.com. Also on September 21, 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.
Respondent sent an e-mail to the Forum (see below), but not a Response. Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a prominent and well-known jewelry and accessory designer. Complainant uses its KENDRA SCOTT mark to promote its goods and services. Complainant registered the KENDRA SCOTT mark in the United States in 2006.
According to Complainant, the disputed domain name is confusingly similar to its KENDRA SCOTT mark because it adds the generic term “used” and appends the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its KENDRA SCOTT mark in any fashion. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website featuring advertisements for goods that compete with Complainant’s products, and advertisements for unrelated goods. The website makes unauthorized use of Complainant’s intellectual property, including copying of numerous images, photographs, text, and trademarks, and it diverts traffic to Respondent’s company.
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith. Respondent has a history of registering infringing domain names. Respondent attempts to attract Internet traffic and commercially benefit from the goodwill of the KENDRA SCOTT mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website. Furthermore, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent did however send an e-mail to the Forum, stating: “The website has been taken down the domain and will lapse and I literally could not care any less about this”.
Complainant owns the mark KENDRA SCOTT and uses it to market jewelry.
Complainant’s rights in its mark date back to 2002.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain name resolves to a website that contains advertising links to products that compete with those of Complainant, as well as to unrelated products.
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.”).
The disputed domain name is confusingly similar to Complainant’s KENDRA SCOTT mark because it adds the generic term “used” and appends the gTLD “.com” to the fully incorporated mark. The addition of a generic term and gTLD does not negate confusing similarity between a domain name and a mark. See 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).). Therefore, the Panel finds that the disputed domain name is confusingly similar, in the sense of the Policy, to Complainant’s KENDRA SCOTT mark.
Complainant has not licensed or otherwise authorized Respondent to use its KENDRA SCOTT mark in any fashion. Respondent is not commonly known by the disputed domain name: in the absence of a response, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information of record lists “Mike graves” as the registrant of the disputed domain. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website featuring advertisements for goods that compete with Complainant’s products, and for unrelated goods. Use of a domain name to resolve to a website featuring competing advertisements is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Further, the use of a domain name to divert internet users to a respondent’s website through confusion as to the affiliation of respondent with complainant cannot be considered a bona fide offering of goods or services, or legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use, and the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent (who did not formally reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent is attempting to attract Internet traffic to its website, while commercially benefitting from the goodwill of the KENDRA SCOTT mark. A domain name is used in bad faith when it resolves to a website featuring unrelated advertisements for which a respondent most likely collects fees. See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (ForumMar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”).
Further, Respondent uses the website to divert Internet users to Respondent’s business by featuring advertisements for competing products. This constitutes evidence of bad faith use. See Dell Inc. v. Innervision Web Solutions, FA 445601 (Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Trimble Navigation Limited v. Davide Erba, D2009-0881(WIPO August 25, 2009) (“The use of the Domain Name for a website featuring links to competitors of the Complainant is a classic example of bad faith.). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith, in the sense of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usedkendrascott.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 16, 2017
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