James Charles Dickinson, p/k/a “James Charles” and Sister Sister LLC and James Charles LLC v. Khanh Nguyen
Claim Number: FA2106001950250
Complainant is James Charles Dickinson, p/k/a “James Charles” and Sister Sister LLC and James Charles LLC (“Complainant”), represented by Kristen Mollnow Walsh of Nixon Peabody LLP, New York, USA. Respondent is Khanh Nguyen (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sister-apparels.com>, registered with NameCheap, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2021; the Forum received payment on June 8, 2021.
On June 9, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <sister-apparels.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 June 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 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@sister-apparels.com. Also on June 10, 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 July 6, 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” 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.”
There are three Complainants in this matter: James Charles Dickinson, p/k/a “James Charles” and Sister Sister LLC and James Charles LLC. All three named Complainants have stakes in different business ventures involving the SISTERS mark and use it to promote clothing bearing that mark.
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.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, therefore it will treat them all as a single entity in this proceeding. Throughout this decision, the Complainants will be collectively referred to as “Complainant”.
A. Complainant
Complainant states that its owner, James Charles Dickinson, p/k/a “James Charles”, is a well-known American Internet personality and beauty YouTuber. James Charles launched his YouTube channel on December 1, 2015 and currently has over 25.4 million subscribers, which is among the most number of subscribers of any beauty and make-up influencer. Since the initial launch of his channel, James Charles has used the introduction “Hi Sisters!” in his videos, and regularly refers to his fans as “sisters.” James Charles has extended his use of “sisters” to his social media and TikTok presence. James Charles currently has over 36.2 million followers on TikTok, 26.9 million followers on Instagram, and 7.8 million followers on Twitter. As a result of James Charles’ popularity and the longstanding and extensive use of SISTERS in connection with his media and beauty influencer platform, the relevant consuming public directly associates SISTERS with James Charles as an indicator of the source of Complainants’ entertainment services. What started as an opening catch phrase, has since grown and adapted to become internationally recognized as a representation for Complainants’ brand and businesses. In fact, Urban Dictionary defines “Hi Sisters” as “make-up artist’s James Charles’ YouTube intro and catch phrase.” In February 2017, Complainant registered the domain name <sisters-apparel.com> and started using it to market its SISTERS apparel line, featuring clothing and related products created and sold by Complainant. Complainant’s website displays a distinctive SISTERS logo. Through such continuous and ongoing use of the SISTERS mark, Complainant has established valuable common law rights, goodwill, and strong consumer recognition in and to the mark throughout the United States. Complainant cites UDRP precedents to support its position.
Complainant alleges that the disputed domain name is confusingly similar to its SISTERS mark, only differing by omitting an “s”, adding a hyphen and the generic term “apparels,” and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the SISTERS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent resolves the disputed domain name to a website where it attempts to pass itself off as Complainant and purports to offer for sale counterfeit or unauthorized versions of Complainant’s goods. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent purports to offer for sale counterfeit or unauthorized versions of Complainant’s goods, disrupting Complainant’s business and leading to commercial gain for Respondent. In a previous UDRP decision, the contested domain name was transferred to Complainant: this indicates a pattern of bad faith registration by Respondent. Additionally, Respondent registered the disputed domain with actual knowledge of Complainant’s rights in the SISTERS mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark SISTERS dating back to at least 2017 and uses it to market clothing.
The disputed domain name was registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a web site that purports to offer counterfeit or unauthorized versions of Complainant’s products. The resolving website mimics Complainant’s legitimate website, displaying Complainant’s mark and logo, and images copied from Complainant’s website.
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”).
Complainant asserts common law rights in the SISTERS mark and provides evidence that it is well-known since 2015 (in particular on YouTube) under that mark, and that it has marketed apparel since 2017 under that mark at the web site <sisters-apparel.com>. Policy ¶ 4(a)(i) recognizes common law rights in a mark if a complainant can demonstrate distinctiveness and secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”); see also Sister Sister LLC and James Charles Dickinson p/k/a “James Charles” v. Khanh Nguyen, FA2009001911687 (Forum Oct. 8, 2020) (holding that Sister Sister LLC and James Charles – the Complainants in this case – “provided sufficient evidence to establish secondary meaning and common law trademark rights [in the SISTERS mark] dating back to 2015” and that Complainants have rights in the SISTERS mark under Policy ¶ 4(a)). The Panel finds that Complainant has provided sufficient evidence to establish common law trademark rights in the SISTERS mark dating back to at least 2017.
The disputed domain name consists of Complainant’s SISTERS mark, with the omission of the final “s”, and the addition of a hyphen, the generic term “apparels,” and the “.com” gTLD. Previous Panels have held that such changes do not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”). Thus, the Panel finds that the <sister-apparels.com> domain name is confusingly similar to Complainant’s SISTERS 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: when there is no response, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “Khanh Nguyen” as the registrant of the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to attempt to pass off as Complainant while offering either counterfeit or unauthorized versions of Complainant’s goods. Specifically, Complainant provides evidence showing that the resolving website displays Complainant’s mark and logo, mimics Complainant’s legitimate website (including images copied from Complainant’s website), and purports to sell Complainant’s goods. Such use does not qualify as either a bona fide offer of goods or service, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Thus, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offer of goods or service, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent has engaged in a pattern of bad faith registration and use of domain names. In support, Complainant cites one previous UDRP decision finding against Respondent. The Panel finds that a single previous decision is not sufficient to establish a pattern of bad faith registration and use. Thus the Panel finds that Complainant has failed to satisfy its burden of proof for this allegation and it will not further discuss it.
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 to purport to sell counterfeit or unauthorized versions of Complainant’s goods while passing off as Complainant. Previous Panels have held that such use of a disputed domain name displays bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website display Complainant’s mark and logo, and images copied from Complainant’s legitimate website. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <sister-apparels.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 6, 2021
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