Alex and Ani, LLC v. li hai
Claim Number: FA1710001753134
Complainant is Alex and Ani, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is li hai (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alexanani.co>, registered with 1API GmbH.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically October 10, 2017; the Forum received payment October 10, 2017.
On October 13, 2017, 1API GmbH confirmed by e-mail to the Forum that the <alexanani.co> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH verified that Respondent is bound by the 1API GmbH registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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@alexanani.co. Also on October 13, 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 November 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Allegations in this Proceeding:
Complainant owns trademarks in connection with its business of marketing and selling various goods and services, including physical retail stores, on-line retail store services featuring jewelry, cosmetics, candles, leather goods and additional fashion accessories and products. Complainant registered the ALEX AND ANI mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,549,848, registered Mar. 19, 2002). See Compl. Ex. E. Respondent’s <alexanani.co> domain name is confusingly similar to Complainant’s mark as it omits the letter “d” from the AND portion of Complainant’s mark and appends the country code top-level domain (“ccTLD”) “.co.”
Respondent has no rights or legitimate interests in the <alexanani.co> domain name. Respondent is not commonly known by the disputed domain name per the WHOIS registration information, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. See Compl. Ex. I. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to sell jewelry that contains Complainant’s ALEX AND ANI mark on the resolving domain. See Compl. Ex. H.
Respondent registered and uses the <alexanani.co> domain name in bad faith. Respondent engaged in a pattern of registering domain names that incorporate well-known third party trademarks. See Compl. Ex. O. Further, Respondent uses the domain name to disrupt Complainant’s business and commercially benefit by diverting customers to Respondent’s website, where they would mistakenly believe they were purchasing Complainant’s products. See Compl. Ex. H. Respondent does this by trying to create confusion as to the source, sponsorship, or affiliation, between Complainant and Respondent’s domain name. Finally, Respondent surely had actual knowledge of Complainant’s rights in the ALEX AND ANI mark based on the longtime use of the mark, and the content displayed on the resolving domain. See Compl. Ex. H.
Respondent’s Contentions in Response:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the <alexanani.co> domain name September 28, 2017. See Compl. Ex. I.
Complainant established that it has rights and legitimate interests in the protected mark contained in its entirety, absent a single letter, within the disputed domain name.
Respondent has no rights or legitimate interests in the protected mark contained in its entirety, absent a single letter, within the disputed domain name.
Respondent registered a disputed domain name containing in its entirety Complainant’s protected mark, absent a single letter, and the domain name remains confusingly similar to the mark.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 registered the ALEX AND ANI mark with the USPTO (e.g. Reg. No. 2,549,848, registered Mar. 19, 2002). See Compl. Ex. E. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant established rights in the ALEX AND ANI mark.
Complainant next argues that Respondent’s <alexanani.co> domain name is identical or confusingly similar to Complainant’s mark as it omits the letter “d” from the AND portion of Complainant’s mark and appends the ccTLD “.co.” Similar changes in a registered mark failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. Despite that omission the compared integers remain visually and aurally very similar and the Panel finds them to be confusingly similar for the purposes of the Policy.”); see also Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). The Panel therefore finds that the <alexanani.co> domain name is confusingly similar to the ALEX AND ANI mark under Policy ¶4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name containing in its entirety, save for one letter, Complainant’s protected mark and that is confusingly similar to that mark; Complainant satisfied the elements of ICANN 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), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the <alexanani.co> domain name. Where a response is not filed, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “li hai / li hai” as the registrant. See Compl. Ex. I. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the ALEX AND ANI mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <alexanani.co> domain name under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent uses the disputed domain name to offer goods and services in direct competition with Complainant. Using a confusingly similar domain name that resolves in a domain that directly competes with a complainant generally fails to make a bona fide offering of goods or services or a noncommercial or fail use. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage, which prominently displays Complainant’s ALEX AND ANI mark and appears to offer jewelry for sale. See Compl. Ex. H. Accordingly, the Panel may find that Respondent competes with Complainant and thus fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant further argues that Respondent registered and used the <alexanani.co> domain name in bad faith. Respondent has a pattern of registering confusingly similar domain names to famous third party marks. A complainant may use cybersquatting arguments to evidence bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides an exhibit containing other domain names held by Respondent incorporating various third party marks, such as <wangpuma.com> and <nikewebshop.info>. See Compl. Ex. O. Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith based on Respondent’s prior history of registering confusingly similar domain names.
Additionally, Complainant argues that Respondent registered and uses the <alexanani.co> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit Respondent by offering competing goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain evidences bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The screenshot provided by Complainant confirms that Respondent displays Complainant’s ALEX AND ANI mark and offers jewelry for sale to the public. See Compl. Ex. H. Accordingly, the Panel agrees that Respondent seeks to disrupt Complainant’s business and attempts to commercially benefit from Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant lastly claims that Respondent had actual knowledge of Complainant’s ALEX AND ANI mark. Actual knowledge of a registered mark prior to registering a confusingly similar domain name can evidence bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the ALEX AND ANI mark based on the longtime use of the mark, and the content displayed on the resolving domain. See Compl. Ex. H. The Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s mark based on the nominal form of the disputed domain name and the use that Respondent made of it, both of which demonstrates bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used a confusingly similar domain name containing in its entirety within it Complainant’s protected mark, but for a single missing letter, and did so in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alexanani.co> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 20, 2017
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