ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION KIN, Inc. v. Yao Tiao Case No. D2024-3630 1. The Parties The Complainant is KIN, Inc., United States of America (“United States” or “U.S.”), represented by Fross Zelnick Lehrman & Zissu, PC, United States. The Respondent is Yao Tiao, China. 2. The Domain Name and Registrar The disputed domain name is registered with Name.com, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2024. On September 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2024, 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 sent an email communication to the Complainant on September 14, 2024, providing the registrant and contact information disclosed by the Registrar. The Complainant filed an amended Complaint on September 16, 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 the Respondent of the Complaint, and the proceedings commenced on September 17, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2024. The Center appointed Oleksiy Stolyarenko as the sole panelist in this matter on October 14, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant in this proceeding is KIN, Inc., a Nevada corporation founded in 1962. The Complainant is one of the largest stores by retail sales in the United States. Prior to the launch of the Complainant’s retail stores in 1962, the Kohl’s name was used by the Complainant’s predecessor in interest, Maxwell Kohl, in connection with a group of Kohl’s Food Stores grocery stores beginning in 1951. The Complainant currently operates more than 1,100 Kohl’s retail stores. One brand exclusive to the Complainant is SONOMA GOODS FOR LIFE, a brand launched in 2015. Under its SONOMA GOODS FOR LIFE trademark, the Complainant offers clothing, shoes, accessories, handbags, towels, candles, bed linens, and more. The Complainant has registered a number of trademarks worldwide in relation to SONOMA GOODS FOR LIFE brand. Some of the SONOMA GOODS FOR LIFE trademark registrations are indicated below: - U.S. trademark registration No. 5143411 for SONOMA GOODS FOR LIFE registered on February 14, 2017 in classes 20, 24, and 27; - Chinese trademark registration No. 19485538 for SONOMA GOODS FOR LIFE, registered on September 7, 2017, in class 25; - Canadian trademark registration No. TMA1061901 for SONOMA GOODS FOR LIFE registered on November 5, 2019 in classes 6, 11, 18, 20, 24, and 27. The Complainant has intensively used these trademarks since their registration. In addition to its physical retail locations, the Complainant sells products through its e-commerce website “www.kohls.com” and through its KOHL’S e-commerce app. In particular, goods under the mark SONOMA GOODS FOR LIFE are being sold at the “www.kohls.com” website. The Respondent is a Chinese resident, and the disputed domain name was registered on July 9, 2024. At the time of filing the Complaint and the Decision, the disputed domain name resolves to an active website devoted to advertising and sales of apparel, shoes, and home goods for the entire family branded with the Complainant’s mark SONOMA GOODS FOR LIFE. The website primary page states the following: “Sonoma Goods For Life® is your trusted source for casual, comfortable, and affordable apparel, shoes, and home goods for the entire family. Since launching in 2001, we’ve been committed to providing quality, versatile products without the luxury price tag.” 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that it has established strong rights in the SONOMA GOODS FOR LIFE mark, which has been used in the United States and internationally for nearly a decade. The Complainant holds numerous trademark registrations for this mark in countries including China, the United States, and Canada, which were obtained before the Respondent registered the disputed domain name.
page 3 The disputed domain name in question is identical to the SONOMA GOODS FOR LIFE mark, with the only difference being the omission of spaces. Established case law supports that a domain name incorporating a complainant’s registered mark is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. The “.com” generic Top-Level Domain (“gTLD”) extension is not considered when determining confusing similarity. The Respondent registered the disputed domain name after the Complainant had made extensive use of the mark and obtained trademark registrations. The burden of proof is on the Respondent to demonstrate rights or legitimate interests in the disputed domain name, which the Respondent cannot do. The renown of the “SONOMA GOODS FOR LIFE” mark suggests that any unauthorized use by the Respondent is likely illegitimate. The Respondent’s website mimics the Complainant’s official site, purportedly offering the Complainant’s products and using its images, which does not constitute a bona fide use. Even if the Respondent were selling genuine products, the failure to disclose the lack of a relationship with the Complainant means the use is not bona fide. There is no relationship between the Complainant and the Respondent that would authorize the Respondent to use the mark or operate a website mimicking the Complainant’s site. The SONOMA GOODS FOR LIFE mark exclusively identifies the Complainant’s goods, and the Respondent’s use of the mark in the disputed domain name indicates familiarity with and recognition of the mark’s renown. The Respondent’s registration of the disputed domain name, without any connection to the Complainant, constitutes opportunistic bad faith. The choice of the disputed domain name by the Respondent suggests an intent to create an association with the Complainant, trading on its reputation. Thus, the Complainant argues that all elements required under the Policy have been satisfied. The disputed domain name is identical to the Complainant’s mark, the Respondent has no legitimate interest in the disputed domain name, and the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has met its burden of proof. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Panel accepts that the Complainant has rights in the SONOMA GOODS FOR LIFE trademark, based on its United States, Canadian and Chinese trademark registrations, and intensive use in connection with the apparel and retail services.
page 4 The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The disputed domain name features the Complainant’s SONOMA GOODS FOR LIFE trademark in its entirety, combined with the gTLD “.com”. The gTLD is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test (WIPO Overview 3.0, section 1.11.1). Therefore, the Panel disregards the gTLD for the purposes of this comparison. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds that the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds 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 rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. According to the Complainant, the Respondent is not authorized or licensed to use the SONOMA GOODS FOR LIFE trademark in the disputed domain name. The website under the disputed domain name does offer goods for sale, however, such offering could not be considered as bona fide, because the website fails to accurately disclose the Respondent’s relationship with the Complainant. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. There is also no evidence suggesting that the Respondent has been known by the name “SONOMA GOODS FOR LIFE”. Given that the disputed domain name includes the Complainant’s trademark completely, the Panel struggles to conceive any legitimate interests of the Respondent in the disputed domain name because the disputed domain name and the website it is connected effectively impersonate or suggest sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0. Under such circumstances, any use of the disputed domain name by the Respondent only increases the possibility of Internet users’ to falsely attribute the disputed domain name to the activities of the Complainant. The Panel finds the second element of the Policy has been established.
page 5 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel established above, the Complainant’s SONOMA GOODS FOR LIFE trademark was used in commerce well before the registration of the disputed domain name. The Complainant’s SONOMA GOODS FOR LIFE trademark predates registration of the disputed domain name for nearly a decade. Therefore, there is a presumption of bad faith registration of the disputed domain name given that it reproduces the Complainant’s SONOMA GOODS FOR LIFE trademarks entirely. The Respondent registered the disputed domain name on July 9, 2024. The website associated with the disputed domain name claims the following: “Sonoma Goods For Life® is your trusted source for casual, comfortable, and affordable apparel, shoes, and home goods for the entire family. Since launching in 2001, we’ve been committed to providing quality, versatile products without the luxury price tag.” This is a clear reference to the business of the Complainant about which the Respondent was well aware. However, nowhere on the website does the Respondent disclose its relationship, or lack thereof, with the Complainant. The Respondent also copied the Complainant’s copyrighted images and goods descriptions from the official Complainant’s website. Thus, the Respondent's aim on targeting the Complainant, its reputation and customers is clear to the Panel. The Panel points out that the disputed domain name resolves to an e-commerce website, trying to pass off as the Complainant or someone affiliated to the Complainant, for commercial gain. Furthermore, the Respondent failed to submit a response to disprove allegations of illegitimate activity or provide any evidence of a good-faith use or to show rights or legitimate interests in the disputed domain name. The Panel concludes that the Respondent’s intent for registering the disputed domain name, which reproduces the Complainant’s trademark entirely has more likely than not been to capitalize on the goodwill of the Complainant’s trademark. The Panel finds that the Complainant has established 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 disputed domain name be transferred to the Complainant. /Oleksiy Stolyarenko/ Oleksiy Stolyarenko Sole Panelist Date: November 6, 2024
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