LuxAGe Group Inc v. Abel NATAF
Claim Number: FA2306002049417
Complainant is LuxAGe Group Inc (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Abel NATAF (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <luxurybazaar.store>, registered with OVH sas.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on June 16, 2023; Forum received payment on June 16, 2023. The Complaint was submitted in both French and English.
On June 19, 2023, OVH sas confirmed by e-mail to Forum that the <luxurybazaar.store> domain name is registered with OVH sas and that Respondent is the current registrant of the name. OVH has verified that Respondent is bound by the OVH sas 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 20, 2023, Forum served the French and English Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 2023 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@luxurybazaar.store. Also on June 20, 2023, the French and English 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement relating to the disputed domain name is written in the French language, thereby making the language of the proceeding French.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the French language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant made the following contentions.
Complainant, LuxAge Group, Inc, provides consumers with jewelry products. Complainant has rights in the LUXURY BAZAAR mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,413,381, registered on October 8, 2013). See Compl. Ex. 2. Respondent’s <luxurybazaar.store> domain name is identical or confusingly similar to Complainant’s LUXURY BAZAAR mark as it incorporates the mark while adding merely the “.store” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <luxurybazaar.store> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its LUXURY BAZAAR mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead offers services identical to those offered by Complainant.
Respondent registered and uses the <luxurybazaar.store> domain name in bad faith. Respondent offers identical or nearly identical services as Complainant. Additionally, Respondent creates initial interest confusion. Furthermore, Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the LUXURY BAZAAR mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides consumers with jewelry products.
2. Complainant has established its rights in the LUXURY BAZAAR mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,413,381, registered on October 8, 2013).
3.Respondent registered the <luxurybazaar.store> domain name on April 18, 2023.
4. Respondent has caused the disputed domain name to be used to offer services identical to those offered by Complainant.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely Complainant submits that it has rights in the LUXURY BAZAAR mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,413,381, registered on October 8, 2013). See Compl. Ex. 2. Registration of a mark with the USPTO is generally sufficient in establishing rights in the mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Since Complainant has registered its mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LUXURY BAZAAR mark. Complainant argues Respondent’s <luxurybazaar.store> domain name is identical or confusingly similar to Complainant’s LUXURY BAZAAR mark. Under Policy ¶ 4(a)(i), merely adding a gTLD is insufficient in differentiating from the mark. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The disputed domain name incorporates the mark while adding the “.store” gTLD. As the Panel agrees, it finds that Respondent’s domain name is identical to Complainant’s LUXURY BAZAAR mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s LUXURY BAZAAR mark and to use it in its domain name;
(b)Respondent registered the <luxurybazaar.store> domain name on April 18, 2023;
(c) Respondent has caused the disputed domain name to be used to offer services identical to those offered by Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <luxurybazaar.store> domain name, nor has Complainant authorized or licensed Respondent to use its LUXURY BAZAAR mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the<amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies Respondent as “Abel NATAF.” See Registrar Verification Email. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent is not using the <luxurybazaar.store> domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), offering services identical to those offered by Complainant is not a bona fide offering of goods or services, nor any noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving webpage, which offers services identical or nearly identical to those offered by Complainant. See Compl. Ex. 5. The Panel therefore finds that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <luxurybazaar.store> domain name in bad faith by offering services identical to Complainant. Under Policy ¶ 4(b)(iv), offering services nearly identical to those offered by Complainant is evidence of bad faith registration and use. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant). The Panel notes that the services offered at the resolving webpage are identical or nearly identical to those offered by Complainant. See Compl. Ex. 5. As the Panel agrees, it finds Respondent registered and uses the disputed domain name under Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent registered and uses the <luxurybazaar.store> domain name in bad faith by creating initial interest confusion. Under Policy ¶ 4(a)(iii), initial interest confusion is evidence of bad faith and may occur where a disputed domain name is obviously related to the complainant’s mark. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). The Panel recalls that Complainant’s LUXURY BAZAAR mark is fully incorporated into the disputed domain name. Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent registered the <luxurybazaar.store> domain name with bad faith constructive and/or actual knowledge of Complainant’s rights in the LUXURY BAZAAR mark. Under Policy ¶ 4(a)(iii), constructive knowledge is insufficient in establishing bad faith; however, actual knowledge demonstrates bad faith and may be established where a respondent includes a mark with longstanding use into the disputed domain name. See also Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). Complainant submits that Respondent had knowledge of Complainant’s rights in the mark given the longstanding use of the mark. As the Panel agrees, it finds that Respondent had actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii), showing bad faith registration.
Complainant has thus made out the third of the three elements that it must established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <luxurybazaar.store> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: July 18, 2023
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