Lagos, Inc. v. Pandorea Development co
Claim Number: FA2104001943347
Complainant is Lagos, Inc. (“Complainant”), represented by Christiane S. Campbell of Duane Morris LLP, Pennsylvania, USA. Respondent is Pandorea Development co (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ligosjewelry.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2021; the Forum received payment on April 29, 2021.
On May 3, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ligosjewelry.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 May 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2021 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@ligosjewelry.com. Also on May 4, 2021, 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 May 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a fine jewelry company based in the United States and has been in business since 1980. Headquartered in Philadelphia, Pennsylvania, Complainant is known internationally for its jewelry craftsmanship and the proprietary bead-like design that is incorporated into its exclusive CAVIAR line of jewelry. Complainant’s jewelry is sold at its flagship store in Philadelphia, independent jewelry retailers, and high-end department stores such as Neiman Marcus, Bloomingdale’s, and Nordstrom. Complainant is associated with a substantial amount of brand goodwill in the United States and worldwide. Its jewelry ranges in price from a couple of hundred dollars to tens of thousands of dollars depending on what stones and materials are used in the specific jewelry piece. For reference, a CAVIAR bracelet with a gemstone costs approximately $700. Complainant has rights in the LAGOS mark based on its registration in the United States in 1991. The mark is registered elsewhere around the world.
Complainant alleges that the disputed domain name is confusingly similar to its mark because it changes the letter “A” to “I” in the mark and merely adds the descriptive term “jewelry” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent does not have any rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use the LAGOS mark. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the disputed domain name to divert users away from Complainant’s website and to Respondent’s where it passes off as Complainant, or an affiliate of Complainant, offers fine jewelry for sale, and requires consumers to take out a line of credit. Consumers have been confused and have enquired regarding whether the resolving website is offering Complainant’s products.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith because it is used to confuse and to attract customers to Respondent’s website where it passes off as connected with Complainant as part of a fraudulent scheme and to supposedly offer fine jewelry for sale. Additionally, Respondent engages in typosquatting. Furthermore, bad faith may be found in Respondent’s lack of response to Complainant’s cease and desist notices. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the LAGOS mark based on the registration and long-term use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark LAGOS dating back to 1991, and uses it to market luxury jewelry products.
The disputed domain name was registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website offers for sale products that compete with those of Complainant. Consumers have been confused and have enquired regarding whether the resolving website is offering Complainant’s products.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name incorporates a misspelling of Complainant’s mark, changing the letter “A” to the letter “I”, and merely adding the descriptive term “jewelry”, which relates to Complainant’s business, and the “.com” gTLD. Under Policy ¶ 4(a)(i), a domain name may be found to be identical or confusingly similar to a complainant’s mark despite the substitution of letters and addition of descriptive terms and a gTLD, in particular when the descriptive term relates to complainant’s business, and there is evidence of consumer confusion. See Belkin Components v. Gallant, FA 97075 (Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (“The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (gTLD) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Everytown for Gun Safety Action Fund, Inc. v. IGI NA / IGI NA CORP, FA2005001897076 (Forum June 23, 2020) (“ the Panel notes that section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition states that ‘In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.’ In the present case, by reason of the facts outlined under the elements below, it is clear that Respondent has sought to target and indeed pass itself off as Complainant through the use of the Domain Name. The Panel finds that the intention of Respondent to mislead Internet users into thinking it is Complainant or connected with Complainant confirms the confusingly similar nature of the Domain Name.”). Therefore, the Panel finds that the <ligosjewelry.com> domain name is confusingly similar to Complainant’s LAGOS mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: absent a response, the WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information lists the registrant as “Pandorea Development co”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
As noted above, in light of Respondent’s failure to reply, the Panel is entitled to accept all reasonable allegations set forth in the Complaint.
Respondent uses the disputed domain name to divert users away from Complainant’s website and to Respondent’s site where it offers competing jewelry for sale, and requires consumers to take out a line of credit. Complainant provides evidence showing that consumers mistakenly believed they were accessing a site that was authorized by, or associated with, Complainant. The use of a disputed domain name to divert users to a respondent’s own website where it offers competing goods or services does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Therefore, the Panel finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to confuse and attract customers to its website where it offers competing jewelry products. The use of a disputed domain name offer competing goods for sale is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ligosjewelry.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 26, 2021
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