DECISION

 

Kimsaprincess, Inc. v. Jarynet Beltran

Claim Number: FA2208002009205

 

PARTIES

Complainant is Kimsaprincess, Inc. (“Complainant”), represented by John L Krieger of Dickinson Wright PLLC, Nevada, USA.  Respondent is Jarynet Beltran (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <skknsbykim.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Luz Helena Villamil Jiménez as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 20, 2022; the Forum received payment on August 20, 2022.

 

On August 22, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <skknsbykim.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 August 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2022 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@skknsbykim.com.  Also on August 24, 2022, 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 2, 2022.

On September 6, 2022 the Complainant submitted additional written statements to respond the allegations made by Respondent in her response to the Complaint.

 

In turn, on September 8, 2022 Respondent submitted additional allegations to support her initial arguments in response to the Complaint, and to respond as well the additional submission of the Complainant.

 

On September 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz Helena Villamil Jimenez 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a company created by Ms. Kim Kardashian, who is the owner, founder and president thereof. To accommodate the various products and events that are marketed under Complainant’s brands, Complainant created a family of marks revolving around and using “KIM KARDASHIAN,” which are widely promoted and marketed globally. Complainant owns numerous trademark registrations throughout the world.

 

Complainant contends that on or around June 1, 2022 Ms. Kardashian announced the launch of the SKKN BY KIM skincare collection, with a release date of June 21, 2022. Complainant uses the SKKN BY KIM Marks in marketing these products through the internet. Ms. Kardashian’s reach is worldwide, with over 326 million followers on Instagram alone, making her one of the top 10 followed on the platform and one of the most followed celebrities in the world. Millions of followers watch Ms. Kardashian to see her latest product releases and fashion choices. Through Ms. Kardashian’s extensive personal social media presence, television appearances and interviews, Ms. Kardashian has advertised and promoted the SKKN BY KIM brand to tens of millions of people. Both Complainant and Ms. Kardashian’s social media pages are also seen by millions of people every day.

The disputed domain name wholly incorporates the entirety of the Complainant’s SKKN BY KIM Marks. The disputed domain <skknsbykim.com> comprises only (i) the SKKN BY KIM Marks (ii) the addition to the letter “s” following SKKN and (iii) the non-distinctive generic top-level domain (“gTLD”), “.com”. These minor differences are insufficient to distinguish the Domain Name from the SKKN BY KIM Marks.

 

Respondent registered the domain name on June 15, 2022, just two weeks after Ms. Kardashian announced the SKKN BY KIM product line. In or around the end of July 2022, the disputed domain name redirected to <1111-love.com>, a website offering skin care products and services that have no connection to SKKN BY KIM or any mention of the mark or products on the site.

 

Prior to the filing of the Complaint, Respondent revised the content of the <1111-love.com> website linked to the disputed domain name, which now offers skin care goods and services in connection with plastic surgery recovery kits and pre and post-operative care for plastic surgery. These goods and services have no connection to SKKN BY KIM, or make any mention of the mark, products, or services on the site.

 

Respondent’s registration and use of the Disputed Domain Name appears to be nothing more than a calculated attempt to capitalize on confused or mistaken Internet users who may use the Disputed Domain Name to access Respondent’s website believing they have reached a website legitimately operated or endorsed by Complainant, when they have not.

 

Respondent is not commonly known by the Disputed Domain Name or any name containing the SKKN BY KIM Marks. The WHOIS registration record for the Disputed Domain Name makes no mention of the domain name or the SKKN BY KIM Marks. Moreover, Complainant has not approved, authorized, or licensed Respondent the right to use its SKKN BY KIM Marks in connection with any domain name.

 

Lastly, Complainant contends that Respondent registered and is using the Disputed Domain Name opportunistically and in bad faith. Given the extensive use and media coverage of Complainant’s SKKN BY KIM Marks, and the fact that the Disputed Domain Name was registered two weeks after Complainant’s announcement of the SKKN BY KIM product line, Respondent must have been aware of Complainant at the time of registration.

 

B. Respondent

It is stated in the initial response that the representatives of Kimsaprincess Inc.  have brought false allegations and speculations against Respondent, since the trademark that supports the Complaint has not been registered yet. The response contains three attachments which are printings of the status of the US applications for registration of the trademarks SKKN and SKKN BY KIM, showing that the applications are suspended.

 

C. Additional Submissions

Complainant:

Complainant submitted an additional document rebutting the statements made by Respondent. In this concern, Complainant contends that Respondent fails to address the substantive issues raised in the Amended Complaint and, instead, argues that she somehow has rights in the domain name simply because the United States Patent and Trademark Office has not yet issued a particular registration to Complainant. Respondent fails to address the following elements: (1) the Domain Name is identical or confusingly similar to Complainant’s SKKN BY KIM Marks; (2) Respondent is not commonly known by any name containing the SKKN BY KIM Marks; (3) Complainant did not authorize Respondent’s use of the SKKN BY KIM Marks; (4) that Respondent concealed her identity through the use of a privacy service; and (5) that Respondent registered and is using the Disputed Domain Name in bad faith. Respondent ignored these factors because there is no plausible explanation supporting good faith for registering the Disputed Domain Name.

 

According to Complainant, Respondent also claims she offers “unrelated products” from another International Class. Respondent seems to believe she can register the SKKN BY KIM Marks as a domain name so long as she sells unrelated products.

 

In addition, Complainant asserts that just two days after Complainant submitted its Amended Complaint, Respondent tagged Ms. Kardashian in an Instagram post which read, in part, “Contact me to purchase the domain name in question @kimkardashian,” an offer she reiterated in her informal response to the Amended Complaint. This is further evidence of both a lack of legitimate interest and bad faith.

 

Respondent:

In her additional submission, Respondent mentions she is contesting the unjustified claims and further allegations of Domain Infringement without ownership of any Domain.

 

Respondent mentions that as a healthcare professional it has become important to her that our younger and older generation are not mislead by influences of social media. Anxiety, depression, and suicide rates have increased in the United States and social media has been liked with this. She adds that she has started the movement named #thechangestartswithyoumovement to empower the younger and the current generation not to be easily misdirected by social media and those that have the power to influence them.

 

Respondent also contests the “common law rights” of Complainant over the trademarks basis of the Complaint. She argues that Complainant has to participate in same process that everyone else and register her trademarks as she has done before. In Respondent’s words, [Ms. Kardashian’s] fame should not give her “common Law rights” nor put her above anyone or due process that we have in place. For further consideration she applied for her trademark, however not approved which was common knowledge prior to her launch. 

 

Respondent adds that there has been no monetary gain or value associated with this case. There will be no monetary attempt to “capitalize on Ms. Kardashian’s fame and products associated with her.” It cannot be assumed or implied that everyone is informed by form of social media or media as withstanding evidence. She states say that as a healthcare provider, media and other forms of social media are not useful and she strongly believes this is causing an uprise in our cases of anxiety, depression, and suicide rates the amount of time waisted engaging entertaining this has drastically fallen since COVID. Respondent claims to be more focused on how to engage in things that will have positive outcomes and create positive world changes.

 

Lastly, Respondent outlines her own interpretation of the regulations concerning trademark registration procedure in the U.S., and contends that she is not selling any goods, and will empower the younger generation that their bodies, skin color and hair should not make them feel any less than anybody else. She underlines that the culture must change, and she plans to create a message that hopefully will resonate to create as much world peace and positivity as possible. She claims that she is “in no form in violation of any law”.

 

FINDINGS

In 2021 Complainant filed applications for registration of the trademarks SKKN in Class 3, SKKN BY KIM in Class 3, SKKN BY KIM in Class 5, SKKN BY KIM in Class 21, and SKKN BY KIM in Class 35. According to the documentation contained in the process, said applications continue to be pending.

 

According to the evidence submitted with the Complaint, Complainant is the holder of the website www.skknbykim.com. The trademark SKKN BY KIM is used on the variety of products offered on said website as well as in social media such as Instagram and others.

 

Respondent registered the <skknsbykim.com> domain name on June 15, 2022. The evidence submitted demonstrates that domain name under dispute resolves to <1111-love.com>, an unfinished and parked webpage.

 

The parties are not in agreement regarding the existence of common law rights over the trademark and service mark SKKN BY KIM, an aspect that is pivotal to decide the present case. And certainly, as can be seen on the parties’ contentions, they are not either in agreement as regards the rights or legitimate interests in respect of the domain name by Respondent, and the fact that the domain was registered and is being used in bad faith by Respondent.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Complainant is the holder of the website www.skknbykim.com, and it is as well the applicant of the trademarks SKKN BY KIM. Said trademark is in use on the aforementioned website and in social media such as Instagram.

 

Now, the bottom line relies on whether Complainant has common law rights over the trademark SKKN BY KIM that entitles it to obtain a favorable decision and, therefore, the transfer of the domain under dispute.

 

Let us elaborate a little bit around trademarks:

 

A trademark is a sign (a word, a design, or a combination of both) that is used to identify products or services in the market in order to individualize them from the same or similar or products or services of competitors in the market.

 

Generally speaking, trademarks are registered in order to secure exclusive rights thereon. However, in countries like the United States (country of residence of the parties to this process) it is imperative to use trademarks in order to obtain and maintain rights, and in addition, the applicable regulations provide for common law rights over trademarks, which arise from actual use of a mark. Common law rights may allow the common law user to successfully challenge a registration or application, and also the usage thereof by a non-authorized third party.

 

Demonstration of common law rights in a mark requires a showing the trademark has acquired secondary meaning in the minds of consumers. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant contends that it has done business under the SKKN BY KIM mark since June 1, 2022, which is prior to Respondent’s registration of the disputed domain name.  Complainant also contends that Complainant engaged in an extensive social media and television marketing campaign related to the SKKN BY KIM mark. In this concern, there is evidence in the process as regards the fact that the SKKN BY KIM products have already garnered significant public attention and interest, since less than three months after Ms. Kardashian announced SKKN BY KIM, 5.5 million Instagram users followed the SKKN BY KIM account. Such a large number of followers can only be achieved by someone who has become extremely well known to everyone.

 

The Panel considers it pertinent to note that Respondent conducted a particularly thorough search of Complainant’s trademark applications and, having established that they remain pending, deemed she has arguments to assert that she is entitled to use the disputed domain name under the consideration that Complainant has no arguments nor tools to defend its trademark. This conclusion is not correct since, as established above, contrary to Respondent’s contentions the applicable regulations do provide for common law rights over trademarks. In fact, the deep legal research conducted by Respondent does show that she was aware of Complainant’s trademark, and based on her findings simply decided to use the trademark because the lack of a trademark registration allows doing so.

 

The Panel therefore finds: (i) that Complainant has asserted common law trademark rights over the trademark SKKN BY KIM; (ii) that the Rules do not require that the Complainant's trademark be registered by a government authority or agency for such a right to exist, and (iii) that the name “SKKN BY KIM” has sufficient secondary association with Complainant. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).

 

Having decided that Complainant has common law trademark rights in its name, the next consideration to make is whether the domain name <skknsbykim.com> is identical or confusingly similar with Complainant’s trademark. The Panel considers that the addition of a gTLD and a single letter fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). In the present case the Disputed Domain Name is confusingly similar to Complainant's Mark because it differs by only a single character from Complainant's Mark. See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Caterpillar Inc. v. Center for Ban on Drugs, Forum Claim No. FA0603000661437 ("the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark"); and Victoria's Secret v. Zuccarini, Forum Claim No. FA0010000095762 (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).

 

In light of the foregoing, the Panel finds that the requirement of the Policy paragraph 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

Complainant contends that Respondent lacks rights or legitimate interests in the <skknsbykim.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the SKKN BY KIM mark. The Panel concurs with this assertion. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). In fact, the WHOIS registration record for the disputed Domain Name lists the registrant as “Jarynet Beltran”, and makes no mention of the domain name or the SKKN BY KIM mark. The record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights.  Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Moreover, there is evidence in the process that demonstrates that the disputed Domain Name initially redirected to <1111-love.com>, a website which intended to offer skin care products and services that have no connection to SKKN BY KIM or any mention of the mark or products on the site. Respondent afterwards revised the content of the <1111-love.com> website linked to the disputed Domain Name, to offer skin care goods and services in connection with plastic surgery recovery kits and pre and post-operative care for plastic surgery. These goods and services have no connection to SKKN BY KIM, or make any mention of the mark, products, or services on the site.

 

In light of the foregoing considerations, the Panel finds that the requirement of the Policy paragraph 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

To start, the Panel cannot fail to quote the Respondent’s words stating that “As a healthcare professional it has become important to me that our younger and older generation are not mislead by influences of social media. Anxiety, depression, and suicide rates have increased in the United States and social media has been liked with this. I have started a movement #thechangestartswithyoumovement to empower the younger and the current generation not to be easily misdirected by social media and those that have the power to influence them.” These words entail an astonishing paradox.  While Respondent presents herself as an altruist individual interested in the benefit of human beings, nothing in registering a domain name that practically reproduces a third party’s trademark and domain name can be understood as a positive action to help young people. To the contrary, taking for oneself any property that belongs to someone else and justify doing so with arguments as those used by Respondent in the present case does set a real bad example that should never be followed by anyone.

 

Aside of the foregoing, the Panel is in agreement with Complainant’s assertion as regards the fact that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use, as Respondent takes advantage of Complainant’s well-known mark to pass itself off as an affiliate of Complainant. Complainant contends that Respondent uses the SKKN BY KIM mark to pass itself off as affiliated with Complainant and direct internet users to its competing and unrelated website.

 

Use of a domain name that is confusingly similar to a well-known mark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).

 

As claimed by Complainant, the presence of the SKKN BY KIM Marks in the disputed Domain Name <skknsbykim> does lead to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Respondent’s efforts to re-direct Complainant’s customers to Respondent’s website for Respondent’s own interests “by creating consumer confusion and using the [SKKN BY KIM Marks] indicate[s] bad faith registration and use according to Policy ¶ 4(b)(iv).” Printingforless.com v. Reno Printing for Less, Case No. FA1336600 (Forum Sept. 7, 2010); Victoria’s Secret Stores Brand Management, Inc. v. Lewis, Case No. FA1337417 (Forum Sept. 2, 2010) (finding that the similarity of respondent’s domain name and complainant’s mark evidenced an intention by respondent to capitalize on complainant’s fame and to profit by attracting Internet users to respondent’s website, revealing bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv)).

 

Lastly, it is imperative to mention the fact that as evidenced by Complainant, Respondent tagged Ms. Kardashian in an Instagram post which read, in part, “Contact me to purchase the domain name in question @kimkardashian,” an offer she reiterated in her informal response to the Amended Complaint. This is further evidence of both a lack of legitimate interest and bad faith.

 

In light of the foregoing considerations, the Panel finds that the requirement of the Policy paragraph 4(a)(iii) is met.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <skknsbykim.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Luz Helena Villamil Jimenez, Panelist

Dated:  September 22, 2022

 

 

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