DECISION
ALC IP Holdings, LLC v. Registration Private
Claim Number: FA2310002068317
PARTIES
Complainant is ALC IP Holdings, LLC ("Complainant"), represented by Philip Nulud of Buchalter, a Professional Corporation, California, USA. Respondent is Registration Private ("Respondent"), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alcltd.co>, registered with NameCheap, Inc.
PANEL
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.
Hon. Karl v. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on October 27, 2023; Forum received payment on October 27, 2023.
On October 27, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <alcltd.co> 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 October 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@alcltd.co. Also on October 30, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant is a globally recognized designer brand that designs, sells, manufactures, and distributes women's clothing.
Respondent's <alcltd.co> domain name is identical or confusingly similar to Complainant's ALC mark. Complainant's official website is <ALCltd.com>. The <alcltd.co> domain name combines ALC which is Complainant's mark, which it is known for, with the descriptive term "ltd", and the gTLD."co".
Respondent lacks rights or legitimate interests in the <alcltd.co> domain name registered on August 8, 2023. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the ALC mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
Respondent registered and uses the <alcltd.co> domain name in bad faith. Respondent's website disrupts Complainant's business as Respondent registered the disputed domain name to intentionally mislead consumers into thinking Respondent is affiliated with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <alcltd.co> domain name.
DISCUSSION
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").
Identical and/or Confusingly Similar
Complainant argues that its registration of the ALC mark with the USPTO (e.g. Reg. No. 4,003,425, registered July 26, 2011) establishes Complainant's rights in the mark. See Target Brands, Inc. v. JK Internet Services, FA 349108 (Forum Dec. 14, 2004) ("the registration of a mark with a legitimate governmental authority is sufficient under the Policy to allow a rebuttable presumption of rights in the mark."). The Panel finds that Complaint has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent's <alcltd.co> domain name is identical or confusingly similar to Complainant's ALC mark. Under Policy ¶ 4(a)(i), adding a descriptive term along with the ".co" gTLD to a mark does not differentiate the domain name from the mark it incorporates. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) ("Respondent's <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant's ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms "investor relations," and the ".com" gTLD, but these additions are insufficient to distinguish the Domain name from complainant's mark for the purposes of Policy ¶ 4(a)(i)."). The Panel finds that Respondent's domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Rights or Legitimate Interests
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 a prima facie case.
Complainant argues that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant, Respondent has never requested or received any authorization, permission or license from Complainant to use the ALC mark and Complainant has not authorized or licensed Respondent to use the ALC mark in a domain name.
Complainant argues that the Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) nor was Respondent authorized by Complainant to register any domain names under or use any of Complainant's trademarks. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel finds that Respondent is not commonly known by the domain name.
Complainant also argues that the disputed domain name resolves to an identical copycat website that is a clone of Complainant's official website. This use cannot amount to a bona fide offering of goods and services or a legitimate noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo FA 1738034 (Forum July 20, 2017) (finding that 'Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use'.). The Panel finds that Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶¶ 4(a)(ii) and 4(c)(i), (ii) and (iii).
Complainant has proved this element.
Registration and Use in Bad Faith
Complainant argues that Respondent attempts to invoke a connection with Complainant and Respondent also attempts to play off of the worldwide fame of the ALC trademark in order to phish unknowing consumers into providing their credit card and other sensitive information to Respondent and/or it may be selling counterfeit, low-quality products to consumers.
Complaint argues that impersonation of the Complainant in the Respondent's fraudulent cloned website shows that the Respondent has actual knowledge of the Complainant, its rights, business and goods. Impersonating a complainant by use of a complainant's mark and cloned website is disruptive and evidences bad faith registration and use. See Microsoft Corporation v. Terrence Green/Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding that respondent's use of the disputed domain name to send fraudulent emails constituted bad faith registration and use pursuant to Policy 4 (b)(iii)). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark.
Complainant also argues that unsuspecting customers who are duped into believing that the domain name is Complainant, to possibly expose their information and/or send funds or other valuable items to Respondent. And Respondent is intentionally using the domain name at issue to gain profits generated from misled consumer association of Complainant's without regard of harm done to Complainant or to consumers. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) ("the Panel finds the respondent is appropriating the complainant's mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv)."). The Panel finds that Respondent has registered and uses the domain name in bad faith.
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <alcltd.co> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
December 2, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page