Complainant is Kaavia James Inc., United States of America (the “United States” or “U.S.”), represented by Pryor Cashman, LLP, United States.
Respondent is Jasmine Fortune, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2021. On June 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 25, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 28, 2021. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on July 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 22, 2021. The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 29, 2021. 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 Complainant Kaavia James, Inc. is a “loan-out” company that owns the rights to the KAAVIA JAMES mark and represents the interest of the individual, Kaavia James Union Wade, a minor. (Kaavia James, Inc. and Kaavia James collectively referred to as “Complainant”). Kaavia James is the daughter of Gabrielle Monique Union-Wade p/k/a Gabrielle Union and former National Basketball Association player Dwyane Tyrone Wade Jr. In addition to the notoriety of Kaavia James’ parents, Kaavia James has garnered notoriety in her own right, as reflected by the over 1.7 million followers on her Instagram page. Complainant, only two and a half years old, has used the KAAVIA JAMES trademark as an identifier in connection with apparel products, literary works, and other endorsements/collaborations since as early as 2019. Complainant has derived six figure revenues from the exploitation of her trademark including from the sale of products bearing and sold under the KAAVIA JAMES mark. One such branding initiative was Complainant’s 2019 deal with the mass retailer New York & Company to produce a children’s clothing collection under the KAAVIA JAMES mark. That collaboration has garnered media recognition by publications such as People, WWD, and the New York Post. In addition, Complainant recently collaborated with Janie and Jack to produce a children’s clothing collection, with a second “Kaavia James Union-Wade x Janie and Jack” collection set to arrive in early 2022. Complainant’s fashion initiatives and Kaavia James herself have received media attention through articles in People Magazine (e.g., article entitled “Gabrielle Union Drops Latest NY & Co. Collection, Says Daughter Kaavia James Has a Better Wardrobe,” dated August 13, 2019); BET (e.g., article entitled “WATCH: Kaavia James Reacts To A Tupac Shirt She Received As A Gift,” dated June 17, 2021); Essence (e.g., article entitled “9 Of Gabrielle Union And Kaavia's Best #TwinningWithMommy Moments,” dated June 10, 2021); Allure (e.g., article entitled” Kaavia James Union Wade’s Wash-Day Routine Is Too Precious,” dated April 30, 2021); and Harper’s Bazaar (e.g., article entitled “Gabrielle Union Twins with Her Two-Year-Old Daughter, Kaavia James Union Wade,” dated December 13, 2020). Complainant was also the inspiration behind the recently published book Shady Baby written by Kaavia James’ parents, Gabrielle Union-Wade and Dwyane Wade Jr. The cover of the book includes the KAAVIA JAMES mark, stating that it was “inspired by fan favorite Kaavia James Union-Wade!” Shady Baby was a New York Times best seller for “Children’s Picture Books” following its release on May 18, 2021, and Complainant has earned substantial royalties as a result of her publishing deal with Harper Collins Book Publishing. Complainant has also received substantial revenues in connection with being a spokesperson and influencer for companies such as Merck & Co., Inc. and KiwiCo, Inc. Complainant is the owner of multiple United States trademark applications for the mark KAAVIA JAMES, filed on March 5, 2019 (more than two years before Respondent registered the Domain Name on June 13, 2021), for use in connection with a wide variety of goods and services, namely, in Class 3, including “cosmetics; cosmetic preparations; makeup; makeup removers; fragrances, perfumes, scented oils and powders, cologne and eau de toilette; non-medicated facial, hand, body and skin preparations” (U.S. Serial No. 88/325,492); in Class 9, including “eyewear, and component parts thereof” (U.S. Serial No. 88/325,497), in Class 14, including “jewelry; gemstones and precious stones; earrings; watches” (U.S. Serial No. 88/325,500); in Class 18, including “bags, namely, beach, book, carry-on, duffel, diaper, gym, leather shopping, shoulder, tote and travel bags” (U.S. Serial No. 88/325,504); in Class 24, including “textiles and goods made of textile, namely, bed sheets, bed blankets, pillow covers, pillow shams” (U.S. Serial No. 88/325,506); in Class 25, including “clothing, namely, tops, bottoms, shirts, shorts, blouses, footwear (U.S. Serial No. 88/325,508) in Class 26, including “hair accessories, namely, hair ties, hair ornaments in the nature of hair wraps, hair clips, hair ties, hair bows, hair pins” (U.S. Serial No. 88/325,511); and in Class 35, including for “retail and wholesale store services, mail order services, on-line ordering services and on-line retail store services” (U.S. Serial No. 88/325,512). The Domain Name was registered on June 13, 2021. 5. Parties’ Contentions A. Complainant (i) Identical or confusingly similar Complainant contends the Panel should find that KAAVIA JAMES is a protectable trademark in which Complainant has exclusive rights. Complainant has derived significant revenues from the exploitation of her name, trademark and publicity rights used on and in connection with a variety of goods and services sold in interstate commerce. As discussed in in Factual Background section above, KAAVIA JAMES is a personal name being used in commerce as a distinctive identifier of Complainant’s goods. As such, Complainant claims rights in the KAAVIA JAMES mark. Further Complainant states that Respondent explicitly acknowledged and admitted the fame of Complainant and value of Complainant’s KAAVIA JAMES mark in Respondent’s emails to Complainant on June 14, 2021, June 16, 2021, June 19, 2021, and June 22, 2021, further discussed below. In addition to Respondent requesting that Complainant pay USD 10,000 for the Domain Name, in Respondent’s June 16, 2019 email Respondent stated, “I control the perfect marketing asset for your partner’s daughter and young star, Kaavia James.” Complainant submits that, on information and belief, seeking to capitalize on the notoriety of Complainant’s KAAVIA JAMES mark and the notoriety of the Kaavia James herself, as well as her parents, Respondent registered the Domain Name without authorization on June 13, 2021. Complainant contends that the Domain Name is identical to the KAAVIA JAMES trademark in which Complainant has rights. (ii) Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent has never been an authorized representative or agent of Complainant. Complainant has never consented to Respondent’s registration of the Domain Name. Representatives of Complainant had previously registered the Domain Name, but the registration inadvertently lapsed through no fault of Complainant. Immediately after the registration lapsed, Respondent registered the Domain Name. Complainant objected to Respondent’s registration and use of the Domain Name by way of a cease and desist letter before instituting this proceeding. Further, upon information and belief, Complainant states that Respondent is not commonly known as “Kaavia James” nor does Respondent have any trademark rights in the KAAVIA JAMES mark. Complainant states that its adoption and use of the KAAVIA JAMES mark in the United States since 2019 precedes Respondent’s registration of the Domain Name on June 13, 2021. Complainant contends that Respondent had knowledge of Complainant’s KAAVIA JAMES mark and of Kaavia James’ fame prior to registration of the Domain Name. This is evidenced by Respondent’s correspondence with Complainant via email on June 14, 2021, as follows: “[w]e own the gorgeous KaaviaJames.com web name. As a courtesy to you, our fabulous team has kept our eyes on the beautiful moniker since expiring 79 days ago and have been successful in recapturing it just for you - it’s what we do best! As illustrated in the two enclosed screenshots, we’ve kindly re-directed the domain name [back] to your @kaaviajames Instagram account as exhibited since March 2019 so as not to disrupt the ingenious Kaav brand you’ve created thus far. With a keen eye to detail and uniformity, your family (and NOT CAA) undoubtedly makes the best home for the name, wouldn’t you agree? For our time and consideration, we’re offering to transfer this precious namesake to you, outright, for $4,500. Be advised, the value of our time increases every subsequent day that we control the domain name. Don’t miss out.” Complainant states this same email demonstrates that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Further, Complainant emphasizes that Respondent admitted in an email communication on June 16, 2021 that “I own Kaaviajames.com. It’s the perfect marketing asset for your partner’s daughter and young star, Kaavia James.” Respondent stated in a June 19, 2021 email that “[a]s mentioned in our talks, my initiatives to watch, secure, and overall, help the Wade team was in good faith, hence, I’ve offered the domain at no-cost. I take my generosity and consideration seriously, therefore, I am only asking for $5000 to compensate for my time.” Further, Respondent reaffirmed Respondent’s intent in obtaining the Domain Name for the primary purpose of selling it for a profit to Complainant in Respondent’s June 22, 2021 email, in which Respondent states, “Please remember, the total value of my time only increases for EVERY day my time is spent helping to fix the problem Brad - and CAA - have caused you.” As such, rather than using the Domain Name in connection with a bona fide offering of goods or services, Respondent registered the Domain Name for the purpose of selling it to Complainant for a profit in excess of Respondent’s out-of-pocket costs. Complainant points out that Respondent has not made a legitimate noncommercial or fair use of the Domain Name. Complainant claims that Respondent has the intent to commercially gain from the Domain Name and to misleadingly divert consumers. Upon information and belief, Respondent registered and is using the Domain Name primarily for the purpose of selling it for a profit and exploiting Complainant’s KAAVIA JAMES mark. In addition, Complainant claims Respondent is using the Domain Name to confuse Internet users and misdirecting them to Respondent’s Instagram page, located at “instagram.com/buckheadmag”, which is a commercial Instagram page promoting Buckhead magazine that is launching “Summer 2021.” Thus, Complainant submits that Respondent is capitalizing on Complainant’s goodwill in its KAAVIA JAMES mark by misdirecting Internet users seeking a website associated with Complainant. In light of the above, Respondent has no rights or legitimate interests in the Domain Name. (iii) Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Domain Name in bad faith. Respondent registered the Domain Name long after Complainant’s use and establishment of rights in the KAAVIA JAMES mark, primarily for the purpose of selling it to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. Complainant established common law trademark rights in the KAAVIA JAMES mark as early as 2019. Complainant filed multiple United States trademark applications for the KAAVIA JAMES marks on March 5, 2019. Respondent did not register the Domain Name until June 13, 2021, which is more than two years after Complainant established common law rights in the KAAVIA JAMES mark and filed trademark applications for the mark. Complainant states that this is further evidenced by Respondent’s June 14, 2021 email, which states that Respondent “kept our eyes on the beautiful moniker since expiring 79 days ago and have been successful in recapturing it just for you,” and that Respondent then originally offered to “transfer this precious namesake to you [Complainant], outright, for $4,500.” Subsequently, in Respondent’s June 19, 2021 email, Respondent increased the purchase price and offered to sell the Domain Name to Complainant “for $5000 to compensate for my time.” Most recently, in Respondent’s June 22, 2021 email, Respondent once again increased the purchase price and offered to sell the Domain Name to Complainant for $10,000 for “Fee for my Time + Generosity.” Complainant submits that UDRP panels have consistently found that such conduct constitutes bad faith. Complainant claims that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion. Complainant argues that UDRP panels have consistently found that the mere registration of domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The evidence shows that Complainant’s KAAVIA JAMES trademark is widely-known, which is enhanced by virtue of the fame and notoriety of Kaavia James and her famous parents, Dwayne Wade Jr. and Gabrielle Union. Further, Complainant states that as of June 14, 2021, Respondent had been redirecting the Domain Name to Complainant’s verified Instagram page (@kaaviajames) located at “instagram.com/kaaviajames”, stating “we’ve kindly re-directed the domain name [back] to your @kaaviajames Instagram account as exhibited since March 2019 so as not to disrupt the ingenious Kaav brand you’ve created thus far”. Complainant submits that UDRP panels find such a false suggestion of affiliation with a complainant to be evidence of bad faith. After Complainant’s June 19, 2021 cease and desist letter, Respondent began redirecting the Domain Name to a different online location, namely, the commercial Instagram page for Buckhead magazine which is, upon information and belief, owned and controlled by Respondent. According to the Instagram page bio for @buckheadmag, “Buckhead Mag” is “A FORTUNE PUBLICATION, RAN BY QUEENS” and is “SMASHING NEWSTANDS NATIONWIDE,” and the description provides a link to the related website. Complainant contends that panels have consistently found bad faith where a respondent redirects a domain name to a different respondent-owned online location. Complainant asserts there is no conceivable good faith use by Respondent. Rather, Respondent admitted that it waited for the registration of the Domain Name to lapse and then registered it for the purpose of selling it to Complainant for a profit. Complainant states panels have found that it cannot be considered good faith to acquire a domain name that is confusingly similar to a company’s trademark, after the company lets the registration lapse. Furthermore, based on the correspondence from Respondent, Respondent has not, and cannot, establish any good faith use of the Domain Name. Respondent has registered and used the Domain Name in bad faith by attempting to attract, for commercial gain, Internet users to its website and Instagram page by creating a likelihood of confusion with Complainant’s mark. Additionally, Complainant submits panels have consistently found bad faith where respondent knew or should have known of the use of the trademark prior to registering a domain name. Here, Respondent knew of Complainant’s KAAVIA JAMES mark at the time Respondent registered and used the Domain Name. Due to the renown of Complainant’s mark, the renown of Kaavia James herself, and the renown of Kaavia James’ parents Gabrielle Union and Dwyane Wade, Respondent knew of Complainant’s rights in its KAAVIA JAMES mark. Further, Respondent’s knowledge of Complainant’s use of the KAAVIA JAMES trademark prior to registering the Domain Name is evidenced by Respondent’s emails on June 14, 2021, June 16, 2021, June 19, 2021, and June 22, 2021, in which Respondent admits to knowing about Complainant’s “ingenious Kaav brand [that Complainant] created thus far”. Moreover, Respondent registered the Domain Name by using a privacy service, so as not to disclose its identity. This is a factor that also indicates bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; The Panel determines that Complainant has demonstrated it has rights in the KAAVIA JAMES trademark, through significant public recognition and widespread use in commerce (and supported by trademark applications filed in 2019). See WIPO Overview of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.5.2, which states that “where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.” See also Dr. Michael Crichton v. In Stealth Mode,WIPO Case No. D2002-0874 (“to establish common law rights in a personal name, it is necessary to show use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source”). The Panel further observes that the Domain Name incorporates the KAAVIA JAMES mark in its entirety and differs from the mark only be omitting the space between the two elements in the name, “Kaavia” and “James”. Thus, the Panel finds that the Domain Name is identical to Complainant’s mark. See Tom Cruise v. Network Operations Center / Alberta Hot Rods,WIPO Case No. D2006-0560 (finding that the disputed domain name Accordingly, the Panel finds that the Domain Name is identical to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0 states, “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”. Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to respond to the Complaint. The Panel finds that Complainant has not authorized Respondent to use Complainant’s KAAVIA JAMES trademark; that Respondent is not commonly known by the Domain Name or the name “Kaavia James”; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the Domain Name effectively impersonates Complainant and the evidence submitted by Complainant shows the Domain Name has been used by Respondent in an effort to force Complainant to buy it from Respondent for a sum substantially in excess of the direct out-of-pocket costs for acquiring it. Moreover, Respondent has not attempted justify why the Domain Name, which directly targets Complainant’s distinctive KAAVIA JAMES mark, was registered. Rather, Respondent through a serious of emails to Complainant has admitted that the Domain Name was registered precisely because it corresponds to Complainant’s KAAVIA JAMES mark and Complainant’s personal name; this is textbook cybersquatting. Accordingly, the Panel finds that Complainant has made a prima facie showing Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel determines that the Domain Name was registered and is being used in bad faith. With respect to registration, the following factors, supported by the evidence submitted by Complainant, demonstrate that Respondent improperly targeted Complainant and its mark when registering the Domain Name: the distinctiveness of Complainant’s KAAVIA JAMES mark; the fact that the Domain Name is identical to Complainant’s mark; the timing of the registration of the Domain Name after Complainant had established rights in its mark and after the previous registration of the Domain Name had inadvertently lapsed; and indeed the emails from Respondent to Complainant acknowledging that Respondent was aware of Complainant and its mark and that this was the reason for registering the Domain Name. See Friedman and Soliman Enterprises, LLC v. Gary Selesko, M&B Relocation and Referral, LLC,WIPO Case No. D2016-0800 (“it cannot be considered good faith to acquire a domain name that is confusingly similar to a company’s trademark, after the company lets the registration lapse.”); Skeeter Products, Inc. v. Registration Private, Domains By Proxy, LLC / Nanci Nette,WIPO Case No. D2020-2320 (finding bad faith where Respondent registered the disputed domain name after Complainant inadvertently let their registration for the disputed domain name lapse). This point is further confirmed by Respondent’s use of the Domain Name. As acknowledged by Respondent in its several emails to Complainant, the Domain Name was being used by Respondent primarily for the purpose of selling it to Complainant for a sum significantly in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. This is a textbook case of bad faith. See Sunnova Energy Corporation v. Super Privacy Service LTD c/o Dynadot,WIPO Case No. D2020-0146 (finding bad faith where the respondent acquired the disputed domain name primarily for the purpose of selling it to the complainant for a sum significantly in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name); HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Max Brauer, CloudStudio,WIPO Case No. D2014-2029 (finding bad faith where the respondent attempted to sell the domain name for a profit). Respondent was also redirecting the Domain Name to a different Respondent-owned online location, the commercial Instagram page for Buckhead magazine, which has nothing to do with Complainant. This is further evidence of bad faith use in the circumstances of this case. See Principal Financial Servs., Inc. v. Domains by Proxy, LLC / principal pfg,WIPO Case No. D2018-1724 (finding bad faith where the respondent was redirecting the domain name to a different respondent-owned website); Cephalon Inc v. Whois Privacy Protection Foundation / Grigorij Minin, Whois Privacy Protection Foundation / Artem Bogdanov, and Alex Ivanov, Evgeny Shaposhnikov,WIPO Case No. D2021-0497 (“Redirecting the domain name to a different respondent-owned website also supports a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark.”). In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy. 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 Domain Name, Christopher S. Gibson
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: August 29, 2021
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