DECISION

 

Fast IP, LLC, dba, Kizik v. Web Commerce Communications Limited / Client Care

Claim Number: FA2309002062438

 

PARTIES

Complainant is Fast IP, LLC, dba, Kizik ("Complainant"), represented by Daniel M. Staren of Snell & Wilmer L.L.P., Arizona, USA. Respondent is Web Commerce Communications Limited / Client Care ("Respondent"), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <kizik-canada.com>, <kizikcanadashoes.com>, <kizikusa.com>, <kizikusashoes.com>, <kizikusstore.com>, <kizikaustraliashoes.com>, <kizikshoes-nz.com>, and <uk-kizikshoes.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.

 

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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 19, 2023; Forum received payment on September 19, 2023.

 

On September 20, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by email to Forum that the <kizik-canada.com>, <kizikcanadashoes.com>, <kizikusa.com>, <kizikusashoes.com>, <kizikusstore.com>, <kizikaustraliashoes.com>, <kizikshoes-nz.com>, and <uk-kizikshoes.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 September 25, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@kizik-canada.com, postmaster@kizikcanadashoes.com, postmaster@kizikusa.com, postmaster@kizikusashoes.com, postmaster@kizikusstore.com, postmaster@kizikaustraliashoes.com, postmaster@kizikshoes-nz.com, and postmaster@uk-kizikshoes.com. Also on September 25, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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 registrations as technical, administrative, and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On October 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant and its licensee have used the KIZIK mark in connection with hands-free footwear and related goods and services since 2017. Complainant owns trademark registrations for KIZIK in standard character form in the United States and other jurisdictions throughout the world, and also asserts common law trademark rights in the mark.

 

Respondent registered the disputed domain names <kizik-canada.com>, <kizikcanadashoes.com>, <kizikusa.com>, <kizikusashoes.com>, <kizikusstore.com>, <kizikaustraliashoes.com>, <kizikshoes-nz.com>, and <uk-kizikshoes.com> in March, May, and July 2023. Respondent's identity does not appear in the public whois records. The domain names are being used for websites that mimic the appearance of Complainant's website, displaying Complainant's KIZIK mark and images of shoes that appear to be identical to those offered by Complainant, offering or purporting to offer these shoes for sale. Complainant alleges that Respondent is not actually selling the shoes that appear on its websites, but is instead attempting to defraud potential purchasers into paying for goods that it cannot and does not intend to deliver. Complainant states that Respondent is not commonly known by the domain names and is not licensed or authorized to use Complainant's mark.

 

Complainant contends on the above grounds that each of the disputed domain names is confusingly similar to its KIZIK mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

 

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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

Each of the disputed domain names <kizik-canada.com>, <kizikcanadashoes.com>, <kizikusa.com>, <kizikusashoes.com>, <kizikusstore.com>, <kizikaustraliashoes.com>, <kizikshoes-nz.com>, and <uk-kizikshoes.com> incorporates Complainant's registered KIZIK trademark, adding a hyphen, a geographic term, a generic term ("store" or "shoes"), or some combination thereof, and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Fast IP, LLC v. Client Care / Web Commerce Communications Ltd., FA 2026658 (Forum Feb. 14, 2023) (finding <kiziksalecanada.com>, <kiziksalesca.com>, <kizikshoessale-ca.com> and <kizikshoesau.com> confusingly similar to KIZIK). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

The disputed domain names incorporate Complainant's registered mark without authorization, and they are being used for misleading websites that use Complainant's mark and otherwise attempt to pass off as being associated with Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., P448 S.R.L. v. Client Care / Web Commerce Communications Ltd., FA 2057404 (Forum Sept. 7, 2023) (finding lack of rights or interests in similar circumstances); Fast IP, LLC v. Client Care / Web Commerce Communications Ltd., FA 2026658, supra (same).

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.

 

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

 

Respondent registered several domain names incorporating Complainant's registered mark and is using them for misleading websites that use Complainant's mark and otherwise attempt to pass off as being associated with Complainant. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., P448 S.R.L. v. Client Care / Web Commerce Communications Ltd., supra (finding bad faith registration and use in similar circumstances); Fast IP, LLC v. Client Care / Web Commerce Communications Ltd., FA 2026658, supra (same). The Panel finds that the disputed domain names were registered and are being used in bad faith.

 

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <kizik-canada.com>, <kizikcanadashoes.com>, <kizikusa.com>, <kizikusashoes.com>, <kizikusstore.com>, <kizikaustraliashoes.com>, <kizikshoes-nz.com>, <uk-kizikshoes.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

David E. Sorkin, Panelist

Dated: October 17, 2023