Kao Kabushiki Kaisha (Kao Corporation) v. Sandra Yackolow / Marblehead Consulting
Claim Number: FA1806001789878
Complainant is Kao Kabushiki Kaisha (Kao Corporation) (“Complainant”), represented by Caroline Valle of Safenames Ltd, United Kingdom. Respondent is Sandra Yackolow / Marblehead Consulting (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <johnfrieda.us> and <biore.us>, registered with Misk.com, Inc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 4, 2018; the Forum received payment on June 4, 2018.
On June 5, 2018, Misk.com, Inc. confirmed by e-mail to the Forum that the <johnfrieda.us> and <biore.us> domain names are registered with Misk.com, Inc. and that Respondent is the current registrant of the names. Misk.com, Inc. has verified that Respondent is bound by the Misk.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 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@johnfrieda.us, postmaster@biore.us. Also on June 11, 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 July 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant registered the JOHN FRIEDA and BIORE marks with the United States Patent and Trademark Office (“USPTO”) (e.g. JOHN FRIEDA—Reg. No. 1,692,299, registered June 9, 1992; BIORE—Reg. No. 2,194,293, registered Oct. 6, 1998). See Compl. Annex 3. Respondent’s <johnfrieda.us> and <biore.us> domain names are identical to Complainant’s mark as each domain name wholly incorporates one of the marks and appends the “.us” country code top-level-domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <johnfrieda.us> and <biore.us> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the marks. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make demonstrable preparations to use the disputed domain names. See Compl. Annex 11, 12.
Respondent registered or uses the <johnfrieda.us> and <biore.us> domain names in bad faith. Respondent demonstrates a pattern of bad faith registration. Respondent inactively holds the disputed domain names. Respondent had actual knowledge of Complainant’s rights in the JOHN FRIEDA and BIORE marks prior to registration of the disputed domain names.
B. Respondent
Respondent failed to submit a response in this proceeding. Respondent registered the <johnfrieda.us> and <biore.us> domain names on May 2, 2002 and May 1, 2002, respectively.
The Panel finds that the disputed domain names are confusingly similar with Complainant’s trademarks; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 Panel finds that the disputed domain names are confusingly similar with the Complainant’s trademarks. Complainant has adequately pleads it rights interests to these trademarks. Respondent arrives at the disputed domain names by taking the marks in total and merely adding “.us” as a TLD country code (ccTLD). This is insufficient to distinguish the disputed domain names from Complainant’s trademarks.
As such, the Panel finds that the disputed domain names are confusingly similar with Complainant’s trademarks.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent has no right, permission, or license to register the disputed domain names. Respondent is not commonly known by the disputed domain names.
In addition, Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent apparently fails to make demonstrable preparations to use the disputed domain names.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names.
In addition, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Complainant argues that Respondent registered the disputed domain names in bad faith, partly evinced by Respondent’s propensity for registering numerous domain names in bad faith. A complainant may use serial cybersquatting to substantiate an argument of bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 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 submits evidence of Respondent’s portfolio of 2,400 domain names which includes numerous domains that appropriate third-party, registered marks similar to those of Complainant. See Compl. Annex 15. Further, Respondent was involved in three past usDRP cases in which Respondent was found to have registered and used the disputed domain name in bad faith and resulted in the transfer of the disputed domain name to the complainants. See Restoration Hardware, Inc. v. Sandra Yackolow / Marblehead Consulting, FA 1452027 (Forum Aug. 20, 2012); Riviana Foods Inc. v. Sandra Yackolow a/k/a Marblehead Consulting, FA 129133 (Forum Dec. 30, 2002); Fruit of the Loom Inc. v. Sandra Yackolow d/b/a Marblehead Consulting, FA 648966 (Forum Apr. 17, 2006). Accordingly, the Panel finds that Respondent registered the <johnfrieda.us> and <biore.us> domain names in bad faith by engaging in serial cybersquatting.
Next, Complainant claims that Respondent inactively holds the <johnfrieda.us> and <biore.us> domain names. Inactively holding a disputed domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant submits screenshots of the inactive resolving websites, which Complainant asserts have been inactive since at least the year 2004. See Compl. Annex 11, 12. The Panel, therefore, finds that Respondent registered and uses the disputed domain name in bad faith.
Finally, the Panel finds that Respondent had actual knowledge of Complainant rights and interest in the related trademarks. Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the JOHN FRIEDA and BIORE marks based upon Complainant’s submission that the JOHN FRIEDA and BIORE trademarks have been active for many years and their earliest trademark registrations predate the registration of both domain names by over 10 years. Further, Complainant asserts Respondent would have been exposed to the existence of the Complainant’s trademarks “JOHN FRIEDA” and “BIORE” at the time of the disputed domain names were registered, especially considering that the Complainant acquired the “JOHN FRIEDA” brand in 2002, a couple of months before the Respondent registered the domain names. At the time, newspaper articles related the acquisition of the “JOHN FRIEDA” brand could be easily found, and this could be the reason why the Respondent registered the disputed domain names. Therefore, given the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <johnfrieda.us> and <biore.us> domain names be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: July 9, 2018
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