ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sanity Jewelry, LLC v. J.R. Jackson, Domain 4 Sale or Lease Case No. D2023-2870 1. The Parties The Complainant is Sanity Jewelry, LLC, United States of America ("United States"), represented by Fuksa Khorshid, LLC, United States. The Respondent is J.R. Jackson, Domain 4 Sale or Lease, United States. 2. The Domain Name and Registrar The disputed domain names and are registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 5, 2023. On July 6, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 7, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (WITHHELD FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 10, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 13, 2023. 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 the Respondent of the Complaint, and the proceedings commenced on July 18, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 9, 2023. page 2 The Center appointed Evan D. Brown as the sole panelist in this matter on August 15, 2023. 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 sells jewelry, knives and wallet chains online through its website found at . It holds United States trademark registrations, including one for the word mark SANITY JEWELRY, which is the subject of registration number 6,475,674, filed on November 23, 2020, and registered on September 7, 2021. The registration certificate alleges a date of first use of in commerce of May 10, 2016. The Complainant has also introduced evidence, in the form of a news article, that the Complainant has been in business since 2015. The Panel's independent research using "The Wayback Machine" site supports the Complainant's assertion of use of the SANITY JEWELRY mark in commerce since at least as early as 2015. According to the WhoIs records, the disputed domain name was registered on January 14, 2021 and the disputed domain name was registered on June 1, 2021. The disputed domain names redirect Internet users to a website found at , which sells products competitive to those of the Complainant. 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain names are confusingly similar to the Complainant's trademark; that the Respondent has no 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. B. Respondent The Respondent did not reply to the Complainant's contentions. However, before filing the Complaint and after a cease and desist letter sent by the Complainant, the Respondent informed that its affiliate in Pakistan has agreed to transfer ownership of the disputed domain names to Complainant. No further communications were received after the filing of the Complaint. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are 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 names, and (iii) the disputed domain names have been registered and are being used in bad faith. The Panel finds that all three of these elements have been met in this case. A. Identical or Confusingly Similar This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain names are identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. page 3 A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the SANITY JEWELRY mark by providing evidence of its trademark registrations. This test under this element for confusing similarity typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. WIPO Overview 3.0, section 1.7. In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant's trademark and the disputed domain name to ascertain confusing similarity. Id. Guided by these principles, the Panel finds that the disputed domain names are confusingly similar to the Complainant's SANITY JEWELRY mark. The disputed domain names differ from the Complainant's mark only inasmuch as one is a slight misspelling of the Complainant's mark (adding an extra "e" within the domain name) and the other adds the prefix "in-" to the Complainant's mark. The Complainant's mark remains sufficiently recognizable for a showing of confusing similarity under the Policy. The Panel finds that the Complainant has established this first element under the Policy. B. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). On this point, the Complainant asserts the following, among other things: (1) there is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, (2) the Respondent is not commonly known by the disputed domain names, (3) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain or misleadingly to divert consumers or to tarnish the trademarks at issue, and (4) the Respondent is not a licensee of the Complainant nor otherwise authorized to use the Complainant's mark. The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. Nothing in the record otherwise tilts the balance in the Respondent's favor. Accordingly, the Panel finds that the Complainant has established this second element under the Policy. C. Registered and Used in Bad Faith The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The facts of this case demonstrate that the Respondent registered the disputed domain names for commercial gain or otherwise to interfere in the business of the Complainant, and to trade on the Complainant's goodwill and reputation. By using the disputed domain names to redirect to a website that sells goods competitive to those of the Complainant, the Respondent has used the disputed domain names in bad faith. For these reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith. page 4 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 names and be transferred to the Complainant. /Evan D. Brown/ Evan D. Brown Sole Panelist Date: August 29, 2023
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