The Complainant is Kathleen Josey, United States of America (“United States”), represented by Mandour & Associates, APC, United States.
The Respondent is Liang Zhang, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2020. On September 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on October 14, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant Kathleen Josey is a singer and songwriter. According to the Complaint, the Complainant has used the designation JOSIE COTTON since 1982 in association with music performance, digital media and other goods and services. The Complainant is the owner of the United States trademark JOSIE COTTON with registration No. 6,093,830, filed on June 3, 2019 and registered on July 7, 2020 for goods in International Class 9, and with first use in commerce on December 31, 1996. The disputed domain name was registered on October 3, 2019. It resolves to a parked webpage containing links to online betting sites. 5. Parties’ Contentions A. Complainant The Complainant submits that its JOSIE COTTON trademark is unique and inherently distinctive and as a result of its continuous use and extensive advertising and promotion throughout the United States, the trademark has developed significant goodwill in the market and represents a valuable asset of Complainant. According to the Complainant, the disputed domain name is confusingly similar to its JOSIE COTTON trademark, as it incorporates the entire trademark without the addition of other relevant elements. The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as it does not reflect the Respondent’s name and the Respondent has never been authorized by the Complainant to use the JOSIE COTTON trademark. The Complainant adds that the disputed domain name was registered by the Respondent many years after the Complainant started using the JOSIE COTTON trademark and had established extensive goodwill in it, and maintains that the Respondent has willfully included the JOSIE COTTON trademark in the disputed domain name in an attempt to disrupt the Complainant’s business. According to the Complainant, the Respondent’s use of the disputed domain name to redirect users to a gambling website cannot support a claim to rights or legitimate interests in it. The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy. The Respondent registered the disputed domain name almost forty years after the Complainant began using its JOSIE COTTON trademark in commerce. According to the Complainant, the Respondent targeted the Complainant’s trademark by incorporating it entirely in the disputed domain name and used it to redirect Internet users to a domain name owned by an unrelated gambling business. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]” The Respondent has however not submitted a Response and has thus not disputed the Complainant’s statements and evidence in this proceeding. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the JOSIE COTTON trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name. The disputed domain name incorporates the JOSIE COTTON trademark in its entirety and the only difference is the omission of the interval between the two words in the disputed domain name. This difference between the disputed domain name and the JOSIE COTTON trademark is negligible and the latter remains easily recognizable in the disputed domain name. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the JOSIE COTTON trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the disputed domain name was registered almost forty years after the Complainant started using its JOSIE COTTON trademark, that the disputed domain name does not reflect the Respondent’s name, and the Respondent has not been authorized by the Complainant to use the JOSIE COTTON trademark. The Complainant points out that the Respondent has used the disputed domain name to redirect to a parked webpage containing links to third party online betting sites unrelated to the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not disputed the above statements of the Complainant; it has not alleged that it has rights or legitimate interests in the disputed domain name and has not provided any legitimate reason for the choice of the disputed domain name which incorporates the Complainant’s JOSIE COTTON trademark and its use for a website containing commercial links to gambling websites. The Respondent’s name does not resemble the disputed domain name, and the case file indicates has it has put into operation a domain name that may attract Internet visitors through its confusing similarity to the Complainant’s trademark and then expose them to links to unrelated third-party gambling websites. This does not appear as a legitimate activity that may give rise to rights or legitimate interests of the Respondent in the disputed domain name. In view of the above, and in the absence of any denial by the Respondent or evidence to the contrary, the Panel finds that the Respondent has failed to rebut the prima facie case made by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The Panel notes that the JOSIE COTTON trademark has been registered on July 7, 2020, while the disputed domain name was registered earlier - on October 3, 2019. As discussed in section 3.8 of the WIPO Overview 3.0, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. However, as an exception to this general proposition, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. The JOSIE COTTON trademark registration certificate shows that it was filed on June 3, 2019 and indicates that its first use in commerce was on December 31, 1996. The Complainant submits that it has consistently used the designation JOSIE COTTON since 1982. This information has not been denied by the Respondent and the case file does not contain any conflicting evidence. Whichever of the two dates is taken into account (1982 or 1996), both of them are many years before the registration of the disputed domain name. The disputed domain name is confusingly similar to the JOSIE COTTON trademark and has been used for a website containing links to unrelated third-party online betting websites. This may lead to a situation where Internet visitors are attracted to the disputed domain name by its confusing similarity to the Complainant’s trademark and are then exposed to links to unrelated third-party gambling websites, which may in turn generate income for the Respondent. The Respondent has not provided any explanation as to why it has chosen and registered such a specific domain name that does not appear to refer to anything but the Complainant’s trademark, and why its use of the disputed domain name should be regarded as legitimate. In view of this and in the lack of any evidence to the contrary, the Panel finds that the circumstances of this case indicate that is more likely than not that the Respondent has registered the disputed domain name in an attempt to unfairly capitalize on the Complainant’s filed but at the time unregistered JOSIE COTTON trademark by attracting for commercial gain Internet users to its website or other online locations, creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the third-party gambling websites to which the Respondent’s website contains links. Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Assen Alexiev
Sole Panelist
Date: October 28, 2020
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