Kimsaprincess Inc. v. Web Team
Claim Number: FA2008001910336
Complainant is Kimsaprincess Inc. (“Complainant”), represented by Peter Wakiyama, Pennsylvania, USA. Respondent is Web Team (“Respondent”), represented by Mark Johnson, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kkwskin.com>, registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2020; the Forum received payment on August 27, 2020.
On August 28, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <kkwskin.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 August 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 2020 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@kkwskin.com. Also on August 31, 2020, 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.
A timely Response was received and determined to be complete on September 25, 2020.
Additional Submissions were received from Complainant on September 21, 2020, and September 30, 2020, and were determined to be complete.
On September 30, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <kkwskin.com> domain name is confusingly similar to Complainant’s KKW mark.
2. Respondent does not have any rights or legitimate interests in the <kkwskin.com> domain name.
3. Respondent registered and uses the <kkwskin.com> domain name in bad faith.
B. Respondent
1. Respondent’s <kkwskin.com> domain name is not confusingly similar to Complainant’s KKW mark because it adds the word “skin.”
2. Respondent has rights and legitimate interests in the <kkwskin.com> domain name, which was registered to park and sell to a current or future client.
3. Respondent did not register the <kkwskin.com> domain name in bad faith because it did not know of Complainant’s rights in the KKW mark.
C. Additional Submissions
1. Respondent’s name and contact information appears to be false.
2. Several different parties have been represented as the business owners of the <kkwskin.com> domain name in communications with Complainant.
3. The addition of the word “skin” to Complainant’s KKW mark in the disputed domain name heightens the confusing similarity.
Complainant is the company of Kim Kardashian West, a well-known media personality. Complainant holds a registration for various KKW marks with the United States Patent and Trademark Office (“USPTO”) (e.g. KKW, Reg. No. 5,823,032, filed on February 16, 2017, and registered Jul. 30, 2019; and KKW BEAUTY, Reg. No. 7,700,362, registered Mar. 19, 2019.) Complainant uses the KKW marks in connection with beauty products.
Respondent registered the <kkwskin.com> domain name on March 26, 2019, and uses it to provide links to products similar to those offered by Complainant, and offers it for sale.
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.
The Panel finds that Complainant has established rights in the KKW mark for the purposes of Policy ¶ 4(a)(i) based on registration with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <kkwskin.com> domain name uses Complainant's KKW mark and simply adds the term "skin," which is related to Complainant’s business, along with the ".com" gTLD. The addition of a descriptive term and a gTLD fails to sufficiently distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel therefore finds that Respondent’s <kkwskin.com> domain name is confusingly similar to Complainant’s KKW mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent lacks rights or legitimate interests in the <kkwskin.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission to use its KKW mark in the domain name. The WHOIS information for the disputed domain name lists the registrant as “Web Team,” which bears no resemblance to the disputed domain name. Respondent has offered no evidence that it is known by the name <kkwskin.com>. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant asserts that Respondent fails to use the <kkwskin.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses it to divert Internet users to the domain name which features products related to the products offered by Complainant. The use of a domain name to display links related to a complainant's business does not constitute a bona fide offering of goods or services or a legitimate or noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant provides a screenshot of the resolving webpage at <kkwskin.com>, which displays links to beauty products, in competition with Complainant's business. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate or noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel notes and agrees with Respondent’s argument that purchasing domain names for resale is a legitimate business; however, that is not the case when a domain name contains a registered trademark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant demonstrates that Respondent registered and uses the <kkwskin.com> domain name in bad faith with the intention of selling it to Complainant for an amount far in excess of registration costs. Complainant provides an email exchange wherein the disputed domain name is offered to Complainant for $100,000.00. Complainant also provides proof that the domain name was listed at auction for $69,999.00 and $67,900.00. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(i). See Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000); see also Avid Dating Life Inc. v. Zhu Xumei, D2014-0006 (WIPO June 17, 2014) (“The Complainant provided, annexed to the Complaint, an email communication in which the Respondent offered the transfer of the disputed domain name to it for an amount of USD 1,999, an amount which is considerably in excess of the reasonable out-of-pocket costs related to the registration of this domain name.”)
Complainant also shows that Respondent uses the <kkwskin.com> domain name to divert Internet users searching for Complainant to Respondent's commercial webpage featuring links to related products. The use of a domain name to divert Internet users to a webpage displaying links to businesses competing with a complainant is bad faith registration and use under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 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)”). Accordingly, the Panel finds that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the <kkwskin.com> domain name with actual knowledge of Complainant's rights in the KKW marks given the fame of the marks and the addition of the term "skin," which relates to Complainant's business. The fame of a mark can be used to show that a respondent had actual knowledge of a complainant's rights in a mark at the time of registration of a domain name and thus registered the domain name in bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also State Farm Mutual Automobile Insurance Company v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1912001873480 (Forum Jan. 10, 2020) ("Actual knowledge of a complainant’s rights in a mark may be proven through a totality of circumstances surrounding the registration of a domain name incorporating that mark."). The Panel finds that Respondent was well aware of Complainant’s rights in the KKW mark and thus registered the <kkwskin.com> domain name with actual knowledge, showing further bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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 <kkwskin.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 2, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page