DECISION
KIN, Inc. v. Gu Beilei / Williams Gloria / MichaelE Calderone / Jose Zimmerman / Xia Yuncai / Tes Uellujgf / shuai he
Claim Number: FA2503002146338
PARTIES
Complainant is KIN, Inc. ("Complainant"), represented by Jennifer L. Gregor of Godfrey & Kahn, S.C., Wisconsin, USA. Respondent is Gu Beilei / Williams Gloria / MichaelE Calderone / Jose Zimmerman / Xia Yuncai / Tes Uellujgf / shuai he ("Respondent"), Multiple Locations.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sonomatop.com>, <sonomagoodsnation.com>, <sonomagoodsforlifea.com>, <sonomagoodsforlifeus.com>, <sonomagoodsclothes.com>, <sonomagoodsus.com> and <sonomagoodslife.com>, registered with Dynadot Inc and Gname.Com Pte. Ltd.
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.
Ho-Hyun Nahm, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on March 21, 2025; Forum received payment on March 21, 2025.
On March 24 and 25 2025, Dynadot Inc and Gname.Com Pte. Ltd. confirmed by e-mail to Forum that the <sonomatop.com>, <sonomagoodsnation.com>, <sonomagoodsforlifea.com>, <sonomagoodsforlifeus.com>, <sonomagoodsclothes.com>, <sonomagoodsus.com> and <sonomagoodslife.com> domain names are registered with Dynadot Inc and Gname.Com Pte. Ltd. and that Respondent is the current registrant of the names. Dynadot Inc and Gname.Com Pte. Ltd. have verified that Respondent is bound by the Dynadot Inc and Gname.Com Pte. Ltd. registration agreements 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 31, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2025 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@sonomatop.com, postmaster@sonomagoodsnation.com, postmaster@sonomagoodsforlifea.com, postmaster@sonomagoodsforlifeus.com, postmaster@sonomagoodsclothes.com, postmaster@sonomagoodsus.com, postmaster@sonomagoodslife.com. Also on March 31, 2025, 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 22, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant alleges that the entities controlling the disputed domain names are, in effect, under the common control of a single person and/or entity operating under multiple aliases. Paragraph 3(c) of the Rules provides that "a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder." Complainant asserts that the websites corresponding to the disputed domain names are each strikingly similar, employing the same basic layout and utilizing common language that impersonates Complainant across the various domains and associated websites. Each of the websites is also hosted by Cloudflare.
Upon a detailed review of the websites associated with the seven disputed domain names, the Panel finds that the websites exhibit a highly uniform structure. Specifically, each site prominently displays "SONOMA GOODS FOR LIFE" in nearly identical font and typographical arrangement, placed either at the top center or top left of the homepage. The organization of the PRODUCTS category is likewise notably consistent, as is the structure and composition of the footer. In addition, all websites incorporate similarly formatted newsletter subscription sign-in sections and indicate the same payment options within the footer. These shared characteristics support a strong inference that the websites are not independently maintained by seven separate entities or individuals, but rather are centrally managed and controlled by a single entity or person.
Further, the Panel notes that all seven disputed domain names are hosted by the same service provider and were registered within a relatively condensed time period—three in 2023 and the remaining four between March and May 2024. Taken together, these circumstances provide a compelling basis for concluding that the disputed domain names, despite being registered under different names, addresses, and contact details, are in fact owned and controlled by the same underlying entity.
Accordingly, the Panel concludes that all seven disputed domain names are commonly owned or controlled by a single Respondent operating under multiple aliases. For purposes of this proceeding, all such aliases shall collectively be referred to as Respondent.
PARTIES' CONTENTIONS
A. Complainant
i) Complainant is a wholly owned subsidiary of Kohl's, Inc., which operates KOHL'S, a nationwide omnichannel retailer with over 60 million customers, more than 1,100 stores across 49 states, and an online platform. One of Complainant's best-known exclusive brands is SONOMA GOODS FOR LIFE, launched by KOHL'S in 2015 and continuously used since that time. Complainant holds rights in SONOMA GOODS FOR LIFE, including a registration with the USPTO (e.g., Reg. No. 5,143,411, registered February 14, 2017). The disputed domain names are confusingly similar to Complainant's SONOMA GOODS FOR LIFE mark in that they incorporate a prominent portion of the SONOMA GOODS FOR LIFE mark along with generic or descriptive terms.
ii) Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use the SONOMA GOODS FOR LIFE mark in connection with the disputed domain names. Respondent is not making a bona fide offering of goods or services, nor are the disputed domain names being used for any legitimate noncommercial or fair use purpose. Rather, Respondent impersonates Complainant by prominently featuring the SONOMA GOODS FOR LIFE mark. Certain of the domain names, namely <sonomatop.com>, <sonomagoodsnation.com>, and <sonomagoodslife.com>, were used for phishing activities.
iii) Respondent registered and is using the disputed domain names in bad faith. Respondent has registered the disputed domain names as part of a phishing scheme and has intentionally attempted to impersonate Complainant by creating a likelihood of confusion with Complainant's mark. Each website prominently displays the SONOMA GOODS FOR LIFE mark, uses product images sourced from Kohls.com, and suggests an affiliation with Kohl's. Respondent registered the disputed domain names with actual knowledge of Complainant's rights in the SONOMA GOODS FOR LIFE mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
FINDINGS
1. All seven disputed domain names were registered within a relatively condensed time period—three in 2023 and the remaining four between March and May 2024.
2. Complainant has established rights in SONOMA GOODS FOR LIFE, including a registration with the USPTO (e.g., Reg. No. 5,143,411, registered February 14, 2017).
3. All seven disputed domain names resolve to websites prominently featuring the SONOMA GOODS FOR LIFE mark and displaying product images sourced directly from Kohl's official website.
4. Certain of the domain names, namely <sonomatop.com>, <sonomagoodsnation.com>, and <sonomagoodslife.com>, were used for phishing. When Complainant commissioned an investigation to conduct a test purchase from the websites associated with these domain names, Respondent accepted payment but failed to deliver the products ordered.
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 asserts rights in the SONOMA GOODS FOR LIFE, including a registration with the USPTO (e.g., Reg. No. 5,143,411, registered February 14, 2017). Registration with USPTO generally suffices to establish rights under Policy ¶ 4(a)(i). Complainant has submitted evidence of this registration, and the Panel concludes that Complainant has established rights in the SONOMA GOODS FOR LIFE mark under Policy ¶ 4(a)(i).
Complainant contends that the disputed domain names, <sonomatop.com>, <sonomagoodsnation.com>, <sonomagoodsforlifea.com>, <sonomagoodsforlifeus.com>, <sonomagoodsclothes.com>, <sonomagoodsus.com> and <sonomagoodslife.com>, are confusingly similar to Complainant's SONOMA GOODS FOR LIFE mark because they incorporate the prominent portion of SONOMA GOODS FOR LIFE mark, along with generic or descriptive terms.
The Panel observes that the addition of a generic and/or descriptive term does not negate confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) ("finding that confusing similarity exists where a disputed domain name contains complainant's entire mark and differs only by the addition of a generic or descriptive phrase and a top-level domain, which are insufficient to differentiate the domain name from the mark for the purposes of the Policy"); see also Superior Windmill Inc. v. JL Company/John Longenecker, D2004-0295 (WIPO June 10, 2004) ("Suffixes such as the use of a plural word or country designation do not alter the fact that the domain names are essentially the same as the trademarks.").
The Panel notes that the disputed domain names incorporate the prominent portion of SONOMA GOODS FOR LIFE mark, along with generic or descriptive terms such as "top," "nation," "a," "us," and "clothes." Accordingly, the Panel finds that the disputed domain names are confusingly similar to the SONOMA GOODS FOR LIFE mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").
Complainant argues that Respondent has no rights or legitimate interest in the disputed domain names as Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). The Panel notes that the unmasked WHOIS data lists "Gu Beilei / Williams Gloria / MichaelE Calderone / Jose Zimmerman / Xia Yuncai / Tes Uellujgf / shuai he" as the registrants, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Respondent impersonates Complainant by prominently featuring SONOMA GOODS FOR LIFE mark. Certain of the domain names <sonomatop.com>, <sonomagoodsnation.com>, and <sonomagoodslife.com> were used for phishing.
Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant does not constitute a bona fide offering of goods or services, nor legitimate noncommercial or fair use. See hipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) ("The resolving webpages between Complainant's and Respondent's websites are virtually the same. Respondent's use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii)."); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002) ("Respondent's use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant's [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).").
The Panel concludes that Respondent's fraudulent activities and passing off do not constitute use of the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case based on the foregoing. All of these circumstances support the finding of a prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Registration and Use in Bad Faith
Complainant asserts that Respondent registered and uses the disputed domain names in bad faith. Respondent has registered the disputed domain names to impersonate itself as Complainant or to appear affiliated with Complainant. Certain of the domain names, namely <sonomatop.com>, <sonomagoodsnation.com>, and <sonomagoodslife.com>, were used for phishing.
When a respondent uses a disputed domain name to impersonate a complainant or for phishing activities, this can constitute bad faith disruption of the complainant's business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith under Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant").
As previously noted, Complainant provides a screenshot of each of the resolving webpages at the seven disputed domain names prominently featuring SONOMA GOODS FOR LIFE mark and displaying product images taken directly from Kohl's website. Furthermore, Complainant provides a declaration of a paralegal with Kohl's, Inc., the operating company and affiliate of the Complainant, demonstrating that Complainant commissioned an investigation to conduct a test-buy of products from the websites at <sonomatop.com>, <sonomagoodsnation.com>, and <sonomagoodslife.com> domain names. Respondent took payment but never delivered the product ordered.
The Panel notes that such passing off activities, as well as phishing, disturb Complainant's business. Additionally, Respondent uses the disputed domain names for commercial gain by redirecting Internet users seeking Complainant to Respondent's websites, creating a likelihood of confusion with Complainant's mark and deceiving Internet users. Accordingly, the Panel finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant contends that Respondent had actual knowledge of Complainant's rights in the SONOMA GOODS FOR LIFE mark, as demonstrated by Respondent's deliberate use of Complainant's mark to promote and sell unauthorized goods related to Complainant. The Panel finds that Complainant has demonstrated that the SONOMA GOODS FOR LIFE mark enjoys widespread recognition and has acquired considerable goodwill. Complainant is a wholly owned subsidiary of Kohl's, Inc., which operates KOHL'S, a nationwide omnichannel retailer with over 60 million customers, more than 1,100 stores across 49 states, and an online platform. One of Complainant's best-known exclusive brands is SONOMA GOODS FOR LIFE, launched by KOHL'S in 2015 and continuously used since that time.
The Panel infers that, due to the notoriety of Complainant's mark and Respondent's use of the disputed domain names to pass itself off as Complainant, including the exact reproduction of Complainant's marks and distinctive elements, Respondent had actual knowledge of Complainant's rights in the SONOMA GOODS FOR LIFE mark at the time of registration. Accordingly, the Panel concludes that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
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 <sonomatop.com>, <sonomagoodsnation.com>, <sonomagoodsforlifea.com>, <sonomagoodsforlifeus.com>, <sonomagoodsclothes.com>, <sonomagoodsus.com> and <sonomagoodslife.com> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Ho-Hyun Nahm, Esq., Panelist
Dated: April 25, 2025
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