LF, LLC v. li yanyan
Claim Number: FA2308002058260
Complainant is LF, LLC (“Complainant”), represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is li yanyan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kobaltstores.com>, registered with Gname.com Pte. Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on August 21, 2023; Forum received payment on August 21, 2023.
On August 23, 2023, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <kobaltstores.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 23, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of September 12, 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@kobaltstores.com. Also on August 23, 2023, the Chinese 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 September 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco, 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 PROCEEDINGS
Pursuant to UDRP Rule 11(a) the Panel finds that persuasive evidence has been proffered by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. Further, the relevant Registration Agreement is available in both English and Chinese. Therefore, after considering the circumstances of the present dispute including Respondent’s failure to respond, the Panel concludes that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant uses the KOBALT mark in connection with the advertising, marketing and sale of hand and power tools exclusively at Lowe’s retail home improvement supply stores.
Respondent own multiple national trademark registrations for the KOBALT mark including registration with the USPTO.
The at-issue domain name is identical or confusingly similar to Complainant’s KOBALT mark as it incorporates the mark in its entirety and merely adds the generic terms or descriptive term “stores,” and the generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the at-issue domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use its KOBALT mark in any way. Respondent does not use the at-issue domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to address a website mimicking KOBALT related pages from Complainant’s genuine www.lowes.com website to deceive internet users into placing orders and entering their personal and financial information. Respondent thus passes itself off as Complainant to purport to offer unauthorized or counterfeit version of products Complainant offers under its KOBALT trademark.
Respondent registered and uses the at-issue domain name in bad faith. Respondent disrupts Complainant’s business and attracts users for commercial gain while passing off as Complainant, purporting to offer unauthorized or counterfeit versions of Complainant’s products. Respondent engages in phishing by asking users to provide private financial and personal information. Respondent had actual knowledge of Complainant’s rights in KOBALT before registering the at-issue domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the KOBALT trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired rights in the KOBALT trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant and purportedly offer products for sale.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration or any of its other trademark registrations worldwide for its KOBALT trademark is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <kobaltstores.com> domain name contains Complainant’s entire KOBALT trademark, followed by the suggestive term “stores,” with all followed by the “.com” top-level domain name. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <kobaltstores.com> domain name from Complainant’s KOBALT mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <kobaltstores.com> domain name is confusingly similar to Complainant’s KOBALT trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.) ); see also See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at-issue domain name. See 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)”).
The WHOIS information for the at-issue domain name ultimately reveals the domain name’s registrant as “li yanyan” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known as <kobaltstores.com>. The Panel therefore concludes that Respondent is not commonly known by the <kobaltstores.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the confusingly similar <kobaltstores.com> domain name to address webpages that mimic KOBALT relate pages on Complainant’s genuine website. There, Respondent purports to sell unauthorized or counterfeit versions of Complainant’s KOBALT branded products and phishes for private financial data from site visitors. Respondent’s use of the confusingly similar domain name pass itself off as Complainant and trade on Complainant’s trademark indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, bad faith circumstances are present that lead the Panel to conclude that Respondent acted in bad faith pursuant to the Policy.
First and as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to address webpages mimicking parts of Complainant’s official website and likewise purports to offer KOBALT products for sale. Respondent’s use of <kobaltstores.com> in this manner is disruptive to Complainant’s business and shows Respondent’s intent to attract internet users, confused as to the domain name’s sponsorship, to the at-issue domain name and its website. Respondent’s use of the domain name thus indicates bad faith regarding Respondent’s registration and use of the domain name under Policy ¶ 4(b)(iii) and under Policy ¶ 4(b)(iv). See Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA 1587466 (Forum Dec. 13, 2014) (“The Panel finds that Respondent’s use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant’s business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).”); see also, Spark Networks PLC v. Houlihan, FA 653476 (Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also, ShipCarsNow, Inc. v. Wet Web Design LLC, FA 1601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”).
Respondent’s also appears to use the at-issue domain name and its related webpages to phish for private financial data which also shows Respondent’s bad faith registration and use of the domain name. See FIL Limited v. Li jie, FA 1718900 (Forum Mar. 17, 2017) (finding the <fidelity.cn.com> domain name was registered and used in bad faith as it resolved to a website which mimicked the complainant’s login page in an attempt to gain Internet users’ personal and financial information).
Moreover, Respondent had actual knowledge of Complainant’s rights in the KOBALT mark at the time it registered <kobaltstores.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s KOBALT trademarks and from Respondent’s use of the domain name to address a look-alike version of parts of Complainant’s genuine website. Respondent’s registration and use of <kobaltstores.com> with knowledge of Complainant’s rights in KOBALT further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kobaltstores.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 14, 2023
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