DECISION

 

Tacori Enterprises v. MitchellColleen

Claim Number: FA2403002088933

 

PARTIES

Complainant is Tacori Enterprises ("Complainant"), represented by Armand Andonian, California, USA. Respondent is MitchellColleen ("Respondent"), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tacoristore.com> ('the Domain Name'), registered with OwnRegistrar, Inc.

 

PANEL

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

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 18, 2024; Forum received payment on March 18, 2024.

 

On March 19, 2024, OwnRegistrar, Inc. confirmed by e-mail to Forum that the <tacoristore.com> Domain Name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, 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 March 19, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@tacoristore.com. Also on March 19, 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 April 9, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant owns the trademark TACORI registered, inter alia, in the USA for jewelry with first use recorded as 1989. 

 

The Domain Name registered in 2023 is confusingly similar to Complainant's trademark, containing it in its entirety and merely adding the generic term 'store' and the gTLD .com, which does not prevent said confusing similarity between the Domain Name and Complainant's mark.

 

Respondent is not commonly known by the Domain Name and is not authorised by Complainant.

 

The website connected with the Domain Name impersonates Complainant using Complainant's trademark in its logo form in its masthead and material taken from Complainant's site without permission. This use is not legitimate. It is registration and use in bad faith, confusing Internet users for commercial gain and disrupting Complainant's business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the trademark TACORI registered, inter alia, in the USA for jewelry with first use recorded as 1989.

 

The Domain Name registered in 2023 is pointed to a website purporting to sell Complainant's products using Complainant's trademark in its logo form in its masthead and material taken from Complainant's site without permission.

 

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

The Domain Name consists of Complainant's TACORI mark (which is registered, inter alia, in the USA for jewelry with first use recorded as 1989), the generic term 'store' and the gTLD .com.

 

Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that a respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the complainant). Accordingly the Panel holds that the addition of the generic term 'store' to Complainant's trademark in the Domain Name does not prevent confusing similarity between the Domain Name and Complainant's mark. 

 

The gTLD .com does not serve to distinguish a domain name from a Complainant's mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark). 

 

Accordingly, the Panel holds that the Domain Name is confusingly similar to Complainant's registered mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

Complainant has not authorised the use of its mark. There is no evidence or reason to suggest Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use of the website is commercial so is not legitimate noncommercial fair use.

 

The website attached to the Domain Name purports to offer Complainant's products and uses Complainant's mark in its logo form in its masthead and material taken from Complainant's site without permission. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the respondent's use of a confusingly similar domain name to compete with the complainant's business did not constitute a bona fide use of goods and services). 

 

Respondent has not answered this Complaint or rebutted the prima facie case evidenced by Complainant herein.

 

As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

In the opinion of the Panelist the use made of the Domain Name in relation to Respondent's site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant as it offers jewelry using Complainant's mark in its logo form in its masthead and material taken from Complainant's website without permission. The use of Complainant's logo on Respondent's website shows that Respondent is aware of Complainant and its rights, business and products.

 

Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the website likely to disrupt the business of Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).

 

As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Paragraphs 4(b)(iii) and (iv).

 

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 <tacoristore.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: April 9, 2024