The Complainant is LovePop, Inc., United States of America (“United States”), represented by Polsinelli PC Law firm, United States.
The Respondent is KCG PTY LTD, Australia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2021. On October 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2021, 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 27, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2021.
The Center appointed John Swinson as the sole panelist in this matter on November 26, 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.
The Panel issued a Procedural Order to the parties on December 3, 2021, as discussed in detail below.
On December 3, 2021, a person with the email address “sales@kingcubed.com.au” emailed the Center stating that the original Complainant was not received and requesting the ability to file a response.
In light of the email communication received on December 3, 2021 from “sales@kingcubed.com.au”, the Panel granted an extension for the submission of Response, with the due date for the Response being extended to December 15, 2021.
The Complainant responded to the Procedural Order on December 10, 2021.
An informal Response was filed on December 14, 2021 by the Managing Director of an entity named King Cubed.
4. Factual BackgroundThe Complainant is a Delaware corporation from the United States, with its principal place of business in Boston, United States. The Complainant was founded in 2014.
The Complainant makes and sells laser-cut 3D pop-up greeting cards.
The Complainant owns registered trade marks for LOVEPOP. The Complainant lists two United States trade mark registrations, including U.S. Reg. No. 4,730,483 for LOVEPOP in class 16, registered May 5, 2015.
The Complainant also owns an Australian trade mark registration for LOVEPOP, which was not listed in the Complaint, namely Australian Trade Mark Reg. No. 1793727 with a priority date of May 9, 2016.
The disputed domain name was registered on March 12, 2018.
The Respondent did not file a formal response, so little is known about the Respondent. The Respondent is an Australian corporation, and according to Australian government records, has its main place of business in the northern suburbs of Perth, and owns several registered business and trading names, namely Kalinga Consulting Group, Plus1 Marketing, FaultZone, and Mid West Iron Ore Alliance.
At the time of this decision, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions A. ComplainantIn summary, the Complainant makes the following submissions:
The Complainant rose to fame in 2015 when it debuted its business on the hit show “Shark Tank,” winning an investment from Kevin “Mr. Wonderful” O’Leary and propelling the Complainant into the successful business it is today.
Through extensive sales and advertising of its high-quality products, the Complainant has generated substantial goodwill and customer recognition in the trade mark LOVEPOP.
The Complainant owns registered trade marks in the United States, referred to in section 4 above.
The Complainant’s trade mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office.
The disputed domain name contains the mark plus a merely descriptive term that does nothing to differentiate the disputed domain name from the LOVEPOP trade mark.
By registering a domain name confusingly similar to the Complainant’s well-known LOVEPOP trade mark, it is quite clear that the Respondent acquired the disputed domain name for the sole purpose of exploiting the Complainant’s rights, title, interest, and goodwill in the LOVEPOP trade mark. Nothing in the record reflects the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
According to the Complainant, the disputed domain name “leads to a fraudulent website which mimics the Complainant’s official website, www.lovepopcard.com [which the Panel assumes to be a typo as this domain name resolves to a pay-per-click site, and the complainant’s actual domain name seems to be the plural “lovepopcards” version], to scam internet users into believing the Respondent purportedly sells the Complainant’s products based on the use of the LOVEPOP trade mark and display of the Complainant’s own products.”
The disputed domain name is clearly not derived from the Respondent’s name. According to the relevant WhoIs records, the Respondent is KCG PTY LTD. Moreover, the Respondent is not, and has never been, a representative of the Complainant or licensed to use the LOVEPOP trade mark.
The Respondent is not affiliated with the Complainant, licensed to use the Complainant’s LOVEPOP trade mark, or licensed to register or use domain names, or associated email accounts, incorporating the LOVEPOP trade mark. Nevertheless, and without the Complainant’s consent, the Respondent registered the disputed domain name on an unknown date.
The disputed domain name consists of the Complainant’s entire distinctive LOVEPOP trade mark, with the addition of one word. The disputed domain name was clearly designed to be confusingly similar to the LOVEPOP trade mark. The Complainant was first made aware of the disputed domain name in late August 2021.
The Respondent’s bad faith is palpable. It is clear from the relevant circumstances that the Respondent was well aware of the Complainant and had the Complainant’s LOVEPOP trade mark firmly in mind when registering the disputed domain name.
With regards to the fraudulent website lifting the contents of the Complainant’s official website, including the Complainant’s products and descriptions of the same, no doubts can arise concerning the Respondent’s knowledge about the Complainant’s activities. Moreover, there is no doubt that many Internet users attempting to visit the Complainant’s website have ended up on the webpage set up by the Respondent.
B. RespondentThe Respondent did not file a formal reply to the Complainant’s contentions.
The Managing Director of King Cubed sent an email to the Center on December 14, 2021, that stated: “I wish to advise the domain name ‘lovepopcards.com.au’ is not in service and is due to expire in 88-days. If everyone is in agreeance, shall we just let this run its course and allow the URL to expire on this date?”
6. Discussion and FindingsParagraph 4(a) of the auDRP provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
(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 or subsequently used in bad faith.
The burden of proof of each element is borne by the Complainant.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable.
A. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark at the date the Complaint was filed and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.
For present purposes, the Complainant has proven that it owns a registered trade mark for LOVEPOP referred to in section 4 above.
On the question of identity or confusing similarity, what is applied is a visual and aural comparison and assessment of the disputed domain name itself to the Complainant’s trade marks: see, for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd.,WIPO Case No. DAU2002-0001. This test is narrower than and thus different to the question of “likelihood of confusion” under Australian trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant however, may fall for consideration under the other elements of the Policy. Argyle Diamonds Limited v. Domain Manager / Argyle Diamond Investments Pty Ltd,WIPO Case No. DAU2021-0028.
Typically and as is appropriate in this case, it is permissible to disregard respectively the Top and Second Level Domains, “.com.au” here, as a functional component of the domain naming system.
“Lovepop” is an invented and distinctive term. The term “cards” used in the disputed domain name is descriptive of the Complainant’s goods and services. The fact that the disputed name incorporates the term “cards” does not distinguish the disputed domain name from the Complainant’s LOVEPOP trade mark, moreover as the Complainant’s business is the sale of greeting cards. Linhope International Limited and Original Beauty Technology Company Limited v. Jianqing Ltd. (Company No. 12282015),WIPO Case No. DAU2021-0013; and Woolworths Limited v. Cracka IP Pty Ltd.,WIPO Case No. DAU2011-0028.
The disputed domain name is confusingly similar to the Complainant’s LOVEPOP trade mark.
The Complainant therefore has established the first requirement under the Policy.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, supra.
The Complainant states that the disputed domain name “leads to a fraudulent website which mimics Complainant’s official website, www.lovepopcard.com, to scam internet users into believing Respondent purportedly sells LovePop’s products based on the use of the LOVEPOP trademark and display of LovePop’s own products.”
However, the Complainant provided no evidence of this. The Complaint included no screenshots or other evidence to demonstrate the content of the website at the disputed domain name. Adding to the Complainant’s difficulties, at the time of the decision, there is no active website at the disputed domain name.
An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, UDRP and auDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. Snowflake, Inc. v. Ezra Silverman,WIPO Case No. DIO2020-0007.
The Complaint did however include a declaration signed by the President of the Complainant. The declaration states in part: “LovePop did not authorize King Cubed Pty LTD (“King Cubed”) to register the domain name lovepopcards.com.au. King Cubed is not, and has never been, a distributor of LovePop. King Cubed is not, and has never been, a representative of LovePop or licensed to use the ‘LOVEPOP’ mark. The use of the images and text from LovePop’s official website on the website lovepopcards.com.au, including images of LovePop’s products and descriptions of the same, is unlicensed and unauthorized by LovePop.”
While the Complaint does not make reference to King Cubed, the Panel notes the signed declaration provided by the Complainant and the KCG name of the Respondent and the email coming from a “kingcubed” account. While the precise nature of the relationship between the Respondent and King Cubed is unclear, the Managing Director of King Cubed responded to the Complainant, as discussed above, but also did not explain the relationship (if any) between the Complainant, the Respondent and King Cubed.
A screen capture of the website at the disputed domain name taken for notification purposesshows a webpage that includes the Complainant’s logo, and underneath the logo the text: “Distributed by King Cubed Pty Ltd”, and at the bottom of the webpage the text “© Copyright 2014 - 2021 Love Pop Cards distributed by King Cubed Pty Ltd”. This leads the Panel to wonder if the parties had a prior business relationship, as to which see below concerning bad faith.
The Complaint asserts that the Respondent is not commonly known by the disputed domain name, that the disputed domain name is not derived from the Respondent’s name, and that the Respondent is not and has never been a representative of the Complainant or licensed to use the Complainant’s LOVEPOP trade mark. The Complaint refers to the declaration in support of the President of the Complainant to support this last statement.
Taking the full facts and circumstances into account, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
The Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances.
Accordingly, the Panel considers the Complainant has established the second requirement under the Policy.
C. Registered or Subsequently Used in Bad FaithUnlike the UDRP, the requirements that the disputed domain name be registered or used in bad faith are disjunctive in the auDRP. That is, it is sufficient for the Complainant to show either that the disputed domain name was registered in bad faith or has been used in bad faith.
Paragraph 4(b) of the Policy provides that:
“b. Evidence of Registration or Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 another person 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 a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location; or
(v) if any of your representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.”
As with paragraph 4(c), paragraph 4(b) is not an exhaustive listing of the circumstances in which a disputed domain name can be found to have been registered or used in bad faith. They are illustrative only.
The Panel is prepared to infer that the Respondent controls the content on the website at the disputed domain name which shows that the Respondent was aware of the Complainant and the LOVEPOP trade mark. There is no evidence before the Panel that the Respondent was a distributor of genuine LOVEPOP greeting cards, and so one may conclude that the Respondent was trying to impersonate the Complainant or at least confuse consumers into believing there was a relationship between the Complainant and the Respondent. Compare CAF Nominees Limited and The Charities Aid Foundation v. Adrian Conti, Australian Multi Cultural Charity,WIPO Case No. DAU2021-0024. Even if the Respondent was a distributor of genuine LOVEPOP greeting cards, the present Complaint informs the Panel that such relationship would have ended and there is no authorization for the registration or use of the disputed domain name.
Use of the disputed domain name for a website that appears to be a website associated with or endorsed by the Complainant, when in fact it is not, is bad faith use of the disputed domain name under paragraph 4(b)(iv) of the Policy.
Alternatively, the Respondent’s conduct amounts to bad faith under paragraph 4(b)(iii) of the Policy.
The Panel also notes that the Respondent has not filed a substantive response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists. Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk,WIPO Case No. D2020-2773, cited in CAF Nominees Limited and The Charities Aid Foundation v. Adrian Conti, Australian Multi Cultural Charity,WIPO Case No. DAU2021-0024.
In these circumstances, the Panel considers the Complainant has demonstrated that the Respondent has registered and used the disputed domain name in bad faith as understood under the Policy.
Accordingly, the Complainant has established the third requirement under the Policy.
7. Appropriate RemedyThe Complainant has met all three requirements under the Policy.
Paragraph 4(i) of the Policy states that “[t]he remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant (provided that the complainant is otherwise eligible to hold that domain name).”
The Complaint as originally filed requested that the disputed domain name be transferred to the Complainant, LovePop, Inc. The Complainant LovePop, Inc. is a United States corporation and is not registered to do business in Australia.
The .au Domain Administration Rules: Licensing Policy No. 2019-0 (“Licensing Policy”), require an Australian presence. The auDA Policy Review Panel final report of March 25, 2019 (“PRP Report”) of the Licensing Policy includes a recommendation at Paragraph 3.2 that “[t]he current eligibility rules for .com.au and .net.au provide that the Australian presence requirement can be satisfied if the registrant owns an Australian registered trade mark or is the applicant for an Australian trade mark.
The Complainant does not own any Australian Trade Mark registrations or applications for “lovepopcards”, and so cannot establish an Australian presence.
Accordingly, the Panel issued a Procedural Order on December 3, 2021 requesting the Parties to provide any information they may have as to whether the Complainant has an Australian presence as per the Licensing Policy (in particular paragraphs 2.4.4 or 2.4.5) or whether the Complainant sought cancellation rather than transfer of the disputed domain name.
In response to the Procedural Order, the Complainant did not provide evidence that it had submitted a relevant trade mark application, but rather requested that the Panel order cancellation of the disputed domain name. The Respondent did not respond to the Procedural Order.
Given the findings in the Complainant’s favour on all three policy elements (including both registration and use in bad faith, although only one is required), the Panel considers that the appropriate remedy would be a transfer to the Complainant; this would however be subject to the discretion of the registry and/or registrar as to the Licensing Rules.
The Panel is mindful that a cancellation order means that the disputed domain name may be subsequently registered by a third party, or even re-registered by the Respondent, and therefore requests that this decision be brought to the attention of auDA.1
8. DecisionFor all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name
John Swinson
Sole Panelist
Date: December 15, 2021
1 Seenotably e.g.,in this respect, World Wrestling Federation Entertainment, Inc. v. Aaron Rift WIPO Case No. D2000-1499: “The only remedies available under the Policy are cancellation or transfer of the domain name. See Policy, paragraph 4(i). Although I find the domain name to be an abusive registration, it is not clear that Complainant would be entitled to use the domain name because it includes the reference to WCW. The record does not explain the relationship, if any, between Complainant and World Championship Wrestling. If the domain name is cancelled, however, it is not clear how the Respondent would be prevented from immediately reregistering the domain name. Given the available alternatives, I believe the best course is to order a transfer of the domain name to Complainant.”