Evergreen Consumer Brands v. Domain Administrator / TD Domain Names
Claim Number: FA1801001767907
Complainant is Evergreen Consumer Brands (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Domain Administrator / TD Domain Names (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <silkience.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2018; the Forum received payment on January 19, 2018.
On January 22, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <silkience.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 January 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 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@silkience.com. Also on January 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 February 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 is a contract filler of liquids, lotions, and gels, and also develops and manages its own brands, such as the SILKIENCE brand. For over 30 years, Complainant has played a role in the manufacture, promotion, and sale of iconic brands. Complainant has rights in the SILKIENCE mark through its registration of the mark with the Canadian Intellectual Property Office (“CIPO”) (e.g. Reg. No. TMA766624, registered May 12, 2010). Respondent’s <silkience.com> domain name is identical to Complainant’s mark as it merely appends the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
Respondent has no rights or legitimate interests in the <silkience.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists the Respondent as “Domain Administrator / TD Domain Names.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. 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 host a website containing competing third-party links which redirect users to Complainant’s competitors. Further, Respondent’s willingness to sell the domain name further demonstrates Respondent’s lack of rights and legitimate interests in the domain name.
Respondent registered and uses the <silkience.com> domain name in bad faith. Respondent registered the domain name for the purpose of selling it, without intending to use it for any other legitimate purpose. Further, Respondent’s propensity to register multiple domain names that trade on brands shows the intent behind the registration. Additionally, Respondent’s use of the domain name at issue disrupts Complainant’s business, as Respondent uses the domain name to trade upon the goodwill associated with Complainant’s mark for commercial gain by hosting a webpage containing competing links. Finally, the fact that Respondent listed advertisements related to Complainant on its website confirms Respondent’s knowledge of the SILKIENCE mark and products at the time it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <silkience.com> domain 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 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 claims rights in the SILKIENCE mark through its registration of the mark with the CIPO (e.g. Reg. No. TMA766624, registered May 12, 2010). Registration of a mark with the CIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”). Accordingly, the Panel finds that Complainant has established rights in the SILKIENCE mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <silkience.com> domain name is identical to Complainant’s mark as it merely appends the gTLD “.com” to the fully incorporated mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel finds that the <silkience.com> domain name is confusingly similar to the SILKIENCE mark under Policy ¶4(a)(i).
Complainant has proved this element.
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 contends that Respondent has no rights or legitimate interests in the <silkience.com> domain name. Where a response is lacking, 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 “Domain Administrator / TD Domain Names” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the SILKIENCE 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 infringing domain name prior to its registration, and Complainant has not given Respondent permission to use the mark for any purpose. Accordingly, the Panel finds Respondent is not commonly known by the <silkience.com> domain name under Policy ¶ 4(c)(ii).
Complainant
also argues that Respondent uses the disputed domain name to resolve in a
website that contains a series of hyperlinks redirecting users to services that
directly compete with Complainant, presumably to commercially benefit from
pay-per-click fees. Using a domain name to offer links to services in direct
competition with a complainant generally does not constitute a bona fide
offering of goods or services or a legitimate noncommercial or fair use. See
Ashley
Furniture Industries, Inc. v. domain admin / private registrations aktien
gesellschaft,
FA1506001626253 (Forum
July 29, 2015) (“Respondent is using the disputed domain name to resolve to a
web page containing advertising links to products that compete with those of
Complainant. The Panel finds that this does not constitute a bona fide
offering or a legitimate noncommercial or fair use.”). Complainant provides various
screenshots of the resolving webpage, which displays links to services such as
“Silkience Shampoo” and
Body Lotion.” Accordingly, the Panel finds that Respondent uses the domain name
to display competing hyperlinks, failing to make a bona fide offering of
goods or services or a legitimate noncommercial or fair use per Policy ¶¶
4(c)(i) or (iii).
Further, Complainant claims that Respondent offers the disputed domain name for sale. Offering a confusingly similar domain name for sale to the public can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant provides screenshots of the locations in which Respondent offers the domain name for sale, which include the WHOIS webpage and also directly on the resolving domain itself. The Panel finds that Respondent offers the disputed domain name for sale, indicative of possessing no rights and legitimate interests under Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant claims that Respondent offers the <silkience.com> domain name for sale. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). As noted previously, Complainant provides screenshots of the locations in which Respondent offers the domain name for sale, which include the WHOIS webpage and also directly on the resolving domain itself. Accordingly, the Panel finds Respondent’s offering of the domain name for sale to the general public is evidence of bad faith registration under Policy ¶ 4(b)(i).
Complainant further argues that Respondent’s propensity to register multiple domain names that trade on brands shows bad faith intent behind the registration. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to evince 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 copies of prior UDRP and WIPO decisions involving the Respondent, where Respondent had to transfer the domain names at issue in those proceedings. 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’s use of the domain name at issue disrupts Complainant’s business, as Respondent uses the domain name to trade upon the goodwill associated with Complainant’s mark for commercial gain by hosting a webpage containing competing links. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). As mentioned under Policy ¶ 4(a)(ii), Complainant provides various screenshots of the resolving webpage, which displays links to services such as “Silkience Shampoo” and “Body Lotion.” Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempts to commercially benefit from Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the SILKIENCE mark at the time of registering the <silkience.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince 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 the fact that Respondent listed advertisements related to Complainant on its website confirms Respondent’s knowledge of the SILKIENCE mark and products at the time it registered the domain name. The Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <silkience.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 23, 2018
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