Kendra Scott and Kendra Scott, LLC v. fang bin feng / abcyel abcyel
Claim Number: FA1901001824667
Complainant is Kendra Scott and Kendra Scott, LLC (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is fang bin feng / abcyel abcyel (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ksjewelryclub.com>, <ksanklet.com>, <kswichita.com>, <ksjewelleryshop.com>, <ksjewelryonline.com>, <ksvipjewelry.com>, <couponks.com>, <ksjewelry4sale.com>, <ksnexklace.com>, <ksjewelryart.com>, <ksfinejewelry.com>, <kstassel.com>, <ksjewelrymall.com>, and <scotsale.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2019; the Forum received payment on January 11, 2019.
On January 11, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <ksjewelryclub.com>, <ksanklet.com>, <kswichita.com>, <ksjewelleryshop.com>, <ksjewelryonline.com>, <ksvipjewelry.com>, <couponks.com>, <ksjewelry4sale.com>, <ksnexklace.com>, <ksjewelryart.com>, <ksfinejewelry.com>, <kstassel.com>, <ksjewelrymall.com>, and <scotsale.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2019 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 the attention of postmaster@ksjewelryclub.com, postmaster@ksanklet.com, postmaster@kswichita.com, postmaster@ksjewelleryshop.com, postmaster@ksjewelryonline.com, postmaster@ksvipjewelry.com, postmaster@couponks.com, postmaster@ksjewelry4sale.com, postmaster@ksnexklace.com, postmaster@ksjewelryart.com, postmaster@ksfinejewelry.com, postmaster@kstassel.com, postmaster@ksjewelrymall.com, and postmaster@scotsale.com. Also, on January 16, 2019, 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 9, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Preliminary Issue: Multiple Complainants
UDRP Rule 3(a) provides that “Any person or entity may initiate an administrative proceeding by submitting a complaint,” while the Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Two separate Complainants are identified in the Complaint filed in this matter: Kendra Scott and Kendra Scott, LLC (“KS LLC”). Complainant Kendra Scott is described in the Complaint as a prominent jewelry and accessory designer, while Complainant KS LLC is indicated to be the exclusive licensee of the KENDRA SCOTT and KS marks. Complainants claim that they share a common grievance against Respondent, and that it would be equitable and procedurally efficient to permit them to proceed jointly as a single Complainant.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
And, in Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), a panel treated two complainants as a single party where both held rights in trademarks contained within disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), a panel found a sufficient link between two complainants where there was a license between them regarding use of a specific mark that was replicated in a challenged domain name.
Inasmuch as it appears from the Complaint that Complainant Kendra Scott is the subject of the marks here in issue, and because it also appears that Respondent does not deny either the claimed relationship between them or the two Complainants’ contentions on the point of procedural efficiency, we conclude that it would be in the interests of justice to permit the Complainants to participate in this proceeding as a single entity for all purposes, and we therefore so direct.
Preliminary Issue: Multiple Respondents
In its Complaint, Complainant asserts that the parties putatively controlling the domain names here at issue are the same person or entity, which is operating under several aliases. Complainant further contends that both listed Respondents, “fang bin feng” and “abcyel abcyel,” have been Respondents in prior UDRP proceedings in which disputed domain names were directed to be transferred to Complainant, and that the domain names recovered in those previous proceedings displayed identical websites despite listing varying registrant information. Further, the Complaint here asserts that several of the domain names have resolved to websites that were very similar or identical to websites resolving from the domains already recovered from Respondents by Complainant. In addition, Complainant contends that Respondents have employed sham Facebook ads to promote the websites resolving from the contested domain names, which mimics a practice that Respondents used in connection with the previously recovered domain names. Finally, Complainant alleges that the domain names disputed here all use the registrar NameSilo and the same privacy service (Privacy Guardian), and that almost all of the domain names were registered within about one month of one another.
Respondent does not contest any of these assertions.
UDRP Rule 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In light of Complainant’s uncontested allegations linking the putative registrants of the domain names, this proceeding will be conducted as against a single Respondent, to be identified as shown in the Caption of this Decision.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant has used the well-known KENDRA SCOTT mark for over a decade in the marketing of a highly successful line of jewelry, as well as online and retail jewelry store services.
Complainant holds a registration for the KENDRA SCOTT mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,125,314, registered August 8, 2006.
Complainant holds a registration for the KS trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,927,238, registered March 29, 2016).
Respondent registered the following domain names in the period from August 8, 2018, through November 13, 2018: <ksjewelryclub.com>, <ksanklet.com>, <kswichita.com>, <ksjewelleryshop.com>, <ksjewelryonline.com>, <ksvipjewelry.com>, <couponks.com>, <ksjewelry4sale.com>, <ksnexklace.com>, <ksjewelryart.com>, <ksfinejewelry.com>, <kstassel.com>, <ksjewelrymall.com>, and <scotsale.com>.
Each of the first thirteen of the domain names is confusingly similar to Complainant’s KS mark.
The domain name <scotsale.com> is confusingly similar to Complainant’s KENDRA SCOTT mark.
Respondent has not been commonly known by any of the domain names.
Complainant has not licensed or otherwise authorized Respondent to use either the KENDRA SCOTT mark or the KS mark.
Respondent does not use the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent currently does not make active use of any of the domain names.
Respondent has used the <ksjewelrymall.com>, <ksvipjewelry.com> and <ksfinejewelry.com> domain names to pass itself off as Complainant in furtherance of a phishing scheme or to sell counterfeit goods.
Respondent has used the domain name <kstassel.com> in connection with sham advertisements and a phishing scheme, and Respondent has used the domain name <scotsale.com> to offer jewelry for sale online in competition with the business of Complainant.
Respondent has no rights to or legitimate interests in any of the domain names.
Respondent has been involved in numerous other UDRP proceedings in which the transfer of domain names has been ordered in favor of UDRP complainants.
Respondent knew of Complainant’s rights in its KENDRA SCOTT and KS marks when Respondent registered the domain names.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain names were registered and are being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 KS and KENDRA SCOTT marks sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the marks with a national trademark authority, the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015):
There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) .... Due to Complainant’s … USPTO registration …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that each of Respondent’s contested domain names: <ksjewelryclub.com>, <ksanklet.com>, <kswichita.com>, <ksjewelleryshop.com>, <ksjewelryonline.com>, <ksvipjewelry.com>, <couponks.com>, <ksjewelry4sale.com>, <ksnexklace.com>, <ksjewelryart.com>, <ksfinejewelry.com>, <kstassel.com> and <ksjewelrymall.com>, is confusingly similar to Complainant’s KS mark. Each of these domain names contains the mark in its entirety, with only the addition of a generic or geographic term that relates to an aspect of Complainant’s business (Complainant has a retail outlet in Wichita, Kansas, while “tassel” relates to a signature line of Complainant’s jewelry products), plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the KS mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (finding that confusing similarity existed where a disputed domain name contained a UDRP complainant’s entire mark and differed only by the addition of a generic phrase and a gTLD, the differences between the domain name and the mark being insufficient to distinguish one from the other for purposes of the Policy).
See also Doosan Corp. v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that neither geographic designations nor terms descriptive of a UDRP complainant’s business will avert a finding of confusing similarity under the Policy when added to the mark of another in creating a domain name).
Similarly, the domain name <scotsale.com> is confusingly similar to Complainant’s KENDRA SCOTT mark in that it includes a phonetically identical version of the SCOTT portion of the mark and merely adds the generic term “sale,” which again refers to an aspect of Complainant’s business, plus the gTLD “.com”. See, for example, VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding, under Policy ¶ 4(a)(i), that a UDRP respondent’s <vnymodels.com> domain name was confusingly similar to the mark VNY MODEL MANAGEMENT).
As to all of the domain names, see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD.
Under Policy 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the disputed domain names, and that Complainant has not licensed or otherwise authorized Respondent to use the KS or KENDRA SCOTT marks. Moreover, the pertinent WHOIS information identifies the registrants of the domain names only as “fang bin feng” and “abcyel abcyel,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent currently does not make active use of any of the domain names. Failure to make active use of a domain name challenged as confusingly similar to the mark of a UDRP complainant can be taken as evidence of a lack of rights and legitimate interests that domain name under Policy ¶¶ 4(c)(i) and (iii). See, for example, Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the … domain name in connection with an active website. The Panel finds that the [failure to make active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Accordingly, when taken in light of the extended period of non-use described in the Complaint, we find that Respondent’s current inactive use of the domain names fails to demonstrate that it has rights to, or a legitimate interest in, any of them.
Further, the Complaint asserts, again without objection from Respondent, that Respondent has used the <ksjewelrymall.com>, <ksfinejewelry.com>, <ksvipjewelry.com>, <scotsale.com> and <kstassel.com> domain names to pass itself off as Complainant online in order to promote the sale of products competing with the business of Complainant, as well as to sell counterfeit goods or to “phish” for the personal information of unsuspecting Internet users, all presumably in an attempt to acquire illicit financial gain. These uses are neither bona fide offerings of goods or services by means of the identified domain names under Policy ¶ 4(c)(i) nor legitimate noncommercial or fair uses of them under Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
See also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding, under Policy ¶ 4(c)(i)-(iii), no bona fide offering of goods or services or legitimate noncommercial or fair use of a disputed domain name existed where a respondent used the website resolving from that domain name to sell products branded with a UDRP complainant’s mark, and were either counterfeit products or legitimate products of that complainant being resold without its authorization).
Finally see Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (concluding, under Policy ¶ 4(c)(i)-(iii), that a respondent had not shown a bona fide offering of goods or services by means of, nor a legitimate noncommercial or fair use of, a contested domain name where that respondent used a UDRP complainant’s mark in a domain name resolving to a website containing putative offers for technical support and password recovery services while soliciting Internet users’ personal information).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
Respondent’s conduct in registering and deploying, virtually simultaneously, fourteen (14) domain names, all of them confusingly similar to one or the other of Complainant’s marks, is, without more, evidence of a pattern of bad faith in Respondent’s registration and use of them, not least because such saturation bombing by registration has the effect of preventing Complainant from employing those domain names in service of its legitimate business. Such bad faith conduct is condemned by Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that a respondent’s registration of multiple domain names, each of them confusingly similar to the mark of another, indicated a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)).
Further, because passive holding of a domain name is, in circumstances like those before us, a form of use, Respondent’s current passive holding of all of the challenged domain names separately demonstrates its bad faith in their registration and use. See VideoLink, Inc. v. Xantech Corporation, FA1608735 (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).
As to Respondent’s prior use of the <ksjewelrymall.com>, <ksvipjewelry.com>, <kstassel.com>, <scotsale.com>, and <ksfinejewelry.com> domain names, whether by passing itself off as Complainant online, or by promoting the sale of goods in competition with the business of Complainant, or to “phish” for the personal information of unsuspecting Internet users, under Policy ¶ 4(b)(iv) all of these uses of those domain names show Respondent’s bad faith in registering and using them. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant”). See also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where a respondent employed a domain name fraudulently to acquire the personal information of a UDRP complainant’s customers).
Finally, it is evident from the record that Respondent knew of Complainant and its rights in the KENDRA SCOTT and KS marks when it registered the disputed domain names. This independently illustrates Respondent’s bad faith in registering them. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in a mark when it registered a confusingly similar domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
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 <ksjewelryclub.com>, <ksanklet.com>, <kswichita.com>, <ksjewelleryshop.com>, <ksjewelryonline.com>, <ksvipjewelry.com>, <couponks.com>, <ksjewelry4sale.com>, <ksnexklace.com>, <ksjewelryart.com>, <ksfinejewelry.com>, <kstassel.com>, <ksjewelrymall.com>, and <scotsale.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 13, 2019
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