ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Knox Lane LP v. Jawar Wingate, health Case No. D2024-3178 1. The Parties Complainant is Knox Lane LP, United States of America (“United States”), represented by Kirkland & Ellis, United States. Respondent is Jawar Wingate, health, United States. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Hostinger Operations, UAB (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2024. On August 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 2024, 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 (Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to Complainant on August 5, 2024, 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 August 7, 2024. 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 August 9, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 12, 2024.
page 2 The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 20, 2024. 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, located in San Francisco, California, is an investment firm in the services and consumer sectors. Complainant has supported over 50 companies and has over USD 2.6 billion of assets currently under its management. Complainant owns United States registered trademark number 6,035,561 for the KNOX LANE word mark, registered on April 14, 2020. Complainant also owns and operates the domain name , registered in June 2015. The Domain Name was registered on July 10, 2024 and at the time of filing of the Complaint, resolved to an inactive page. At the time of the Decision, the Domain Name resolves to an error page. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s service mark; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark and service mark registrations for KNOX LANE, and that Respondent registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide and well known KNOX LANE services. Complainant notes that it has no affiliation with Respondent. Complainant further contends that Respondent is using the Domain Name as a tool to exploit Complainant’s reputation for its own commercial gain, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name other than trademark infringement. Further, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith.
page 3 Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Thus, although in this case, Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence of its rights in the KNOX LANE service mark, as noted above under section 4. Complainant has also submitted evidence which supports that the KNOX LANE service mark is widely known and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the KNOX LANE service mark. With Complainant’s rights in the KNOX LANE service mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case is, “.com”), is identical or confusingly similar to Complainant’s trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant’s KNOX LANE service mark. The use of Complainant’s service mark in its entirety, with the addition of a hyphen “-” between “KNOX” and “LANE”, does not prevent a finding of confusing similarity between the Domain Name and the KNOX LANE service mark as it is recognizable in the Domain Name. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes out such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its KNOX LANE trademarks, and does not have any rights or legitimate interests in the Domain Name. In addition, Complainant asserts that Respondent is not an authorized reseller and is not related to Complainant. Respondent is also not known to be associated with the KNOX LANE service mark and there is no evidence showing that Respondent has been commonly known by the Domain Name. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, at the time of the filing of the Complaint, the Domain Name resolved to an inactive webpage. Complainant asserts that Respondent has registered the Domain Name to use in connection with a phishing scheme, distributing malware, unauthorized account access/hacking or otherwise attempting to pass off as Complainant. As an example, Complainant notes that it received a forwarded copy of an email dated July 10, 2024 along with a follow-up email dated July 11, 2024, both sent from someone claiming to be “Shamik
page 4 Patel, using the email address “[…]@knox-lane.com” and both sent to the Chief Executive Officer of one of Complainant’s partner companies. Complainant further notes that the real Mr. Patel is a partner and co-founder of Knox Lane, uses an email address which is nearly identical to that from which the aforementioned emails were sent, except for the absence of the added hyphen in the Domain Name. Complainant also asserts that in the emails, the person posing to be Complainant’s founder repeatedly misspelt the email recipient’s name and asks for his “availability”, presumably to send a meeting invitation containing malware. While Complainant did not provide support for the above assertions, the Panel notes that the Domain Name does provide Respondent with the opportunity to access communications via email addresses with the “@knox-lane.com” email address, which is not rebutted by Respondent. The resulting confusion would cause damage to Complainant’s reputation, good will and interfere with Complainant’s business activities. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name, reinforcing the notion that Respondent was not using the Domain Name in connection with a bona fide offering. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name, and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, 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 finds that Complainant has provided ample evidence to show that registration and use of the KNOX LANE service mark long predates the registration of the Domain Name. Complainant is also well established and known. Indeed, the record shows that Complainant’s KNOX LANE service mark and related services are widely known and recognized. Therefore, Respondent was aware of the KNOX LANE trademarks when it registered the Domain Name, knew, or should have known that the Domain Name was confusingly similar to Complainant’s trademarks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
page 5 The Panel therefore finds that Respondent’s awareness of Complainant’s service mark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007. Further, the registration of the Domain Name incorporating Complainant’s KNOX LANE service mark in its entirety suggests Respondent’s actual knowledge of Complainant’s rights in the KNOX LANE service mark at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name. As noted above, Complainant asserts, without providing support, that Respondent has registered the Domain Name to use in connection with a phishing scheme, potentially for distributing malware, or otherwise attempting to pass off as Complainant. The Panel notes that the Domain Name does provide Respondent with the opportunity to access communications via email addresses with the “@knox-lane.com” email address, which is not rebutted by Respondent. The resulting confusion would cause damage to Complainant’s reputation, goodwill and interfere with Complainant’s business activities. At the time of the Decision, the Domain Name resolves to an inactive or error webpage, which does not change the Panel’s finding of Respondent’s bad faith. Further, the Panel also notes the reputation of the KNOX LANE service mark, the failure of Respondent to submit a Response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good-faith use to which the Domain Name may be put. Accordingly, the Panel finds that Respondent registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 be transferred to Complainant. /Kimberley Chen Nobles/ Kimberley Chen Nobles Sole Panelist Date: October 4, 2024
Full & Egal Universal Law Academy