DECISION

 

Cynthia Shahian LLC v. Kurt Lopez / Lopez Kurt

Claim Number: FA2402002082767

PARTIES

Complainant is Cynthia Shahian LLC ("Complainant"), represented by Caroline A. Lebel of Cooley LLP, California, USA. Respondent is Kurt Lopez / Lopez Kurt ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kardashiankloset.shop>, registered with Web Commerce Communications Limited dba WebNic.cc.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Dawn Osborne and The Honorable Neil Anthony Brown KC, Panelists, and Alan L. Limbury as Panelist and Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 6, 2024. Forum received payment on February 6, 2024.

 

On February 7, 2023, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to Forum that the <kardashiankloset.shop> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 February 14, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2024 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@kardashiankloset.shop. Also on February 14, 2024, 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.

 

On March 12, 2024, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Dawn Osborne and The Honorable Neil Anthony Brown KC as Panelists and Alan L. Limbury as Chair.

 

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, Cynthia Shahian LLC, is a California-based company that operates a highly popular e-commerce website, "www.kardashiankloset.com", selling clothing and accessories that were once worn by and/or belonged to members of the well-known Kardashian-Jenner family. 

 

Complainant registered the <kardashiankloset.com> domain name on December 1, 2016 and began publicly doing business and operating its website in October 2019. Complainant enjoys common law rights under U.S. law in the mark KARDASHIAN KLOSET in connection with the operation of its website.  As a result of Complainant's significant effort promoting the company since October 2019, the KARDASHIAN KLOSET mark has come to embody the valuable goodwill that Complainant has earned in the marketplace for its vision of offering everyday fans of the Kardashian-Jenner family direct access to luxury, secondhand clothing straight from the family members' closets.

 

Respondent's <kardashiankloset.shop> domain name is identical to Complainant's KARDASHIAN KLOSET mark.

 

Respondent has no rights or legitimate interests in respect of the <kardashiankloset.shop> domain name. Complainant has not authorized Respondent to use KARDASHIAN KLOSET, nor does Complainant have any affiliation with Respondent. Respondent, before any notice of the dispute, made no use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; Respondent (as an individual, business, or other organization) has not been commonly known by the domain name; and Respondent is not making a legitimate noncommercial or fair use of the domain name. Rather, the domain name resolves to a website that is a rip-off of Complainant's "www.kardashiankloset.com" website.

 

Respondent registered the <kardashiankloset.shop> domain name in bad faith with actual knowledge of Complainant's rights in the KARDASHIAN KLOSET mark and it is designed to divert and confuse consumers attempting to reach Complainant's domain. Respondent uses it in bad faith to resolve to a website that purports to belong to Complainant and is an imitation of Complainant's website, designed to confuse consumers as to the nature and origin of Respondent's website.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has established all the elements entitling it to relief.

 

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 the domain name should be cancelled or transferred:

 

(i)                      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)                      Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)                      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 as 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 has provided evidence that, through extensive use and promotion in commerce and extensive press coverage since 2019, KARDASHIAN KLOSET has become a distinctive identifier which United States consumers associate with Complainant's goods and services. Accordingly, the Panel finds that Complainant has shown that it has common law trademark rights in KARDASHIAN KLOSET and that  Respondent's <kardashiankloset.shop> domain name is identical to Complainant's mark, only differing by the addition of the inconsequential ".shop" generic top-level domain ("gTLD"), which may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

 

Complainant has established this element.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

 

(i)         before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)         Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

 

(iii)         Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

The <kardashiankloset.shop> domain name was registered on September 20, 2023, several years after Complainant has shown that its KARDASHIAN KLOSET mark had become widely known in the United States, where Respondent resides. The gTLD ".shop" conveys the false representation that the website to which the domain name resolves is a sales outlet of Complainant. In keeping with that representation, Respondent's website frequently displays Complainant's KARDASHIAN KLOSET mark and copies of images and descriptions of clothing taken from Complainant's website, offered at heavily discounted prices.

 

These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <kardashiankloset.shop> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.

 

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.

 

Complainant has established this element.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:

(iii)         Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)        by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.

The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's widely known KARDASHIAN KLOSET mark when Respondent registered the <kardashiankloset.shop> domain name and that Respondent did so primarily for the purpose of disrupting Complainant's business by masquerading as Complainant and purporting to offer Complainant's genuine goods at greatly discounted prices. Further, that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark as to the source of Respondent's website and of the goods promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iii) and (iv).

 

Complainant has established 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 <kardashiankloset.shop> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne

 

The Honorable Neil Anthony Brown KC

Panelists

 

Alan L. Limbury as Panelist and Chair.

Dated: March 15, 2024