WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alex and Ani LLC v. Whois Privacy Protection Service, Inc. / ICS INC.
Case No. D2012-2451
1. The Parties
The Complainant is Alex and Ani LLC of Cranston, Rhode Island, United States of America, represented by McDonald Hopkins LLC, United States of America.
The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America / ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <alexanani.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2012. On December 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2012, 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 December 24, 2012.
The Center verified that the Complaint and 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2013.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 5, 2013. 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 is a limited liability company incorporated in the Rhode Island, United States of America and it has, for over thirteen years sold jewelry, fashion products and accessories and other articles under the trademark ALEX AND ANI. It operates through twenty-five retail stores and fifty in-store locations across the United States. Its products have been featured in a number of well known publications including Vogue. It also designs and sells jewelry and other items under character merchandising licenses from other organizations including Major League Baseball, the United States Armed Forces, Kentucky Derby, Olympic Games and University and College Sororities and Fraternities as well as a number of charitable organizations. The Complainant holds trademark registrations in the United States for the trademark ALEX AND ANI dating from as early as April 10, 2001. Over the past thirteen years it has invested in substantial advertising and promotion, including on-line promotion at its website at <alexandani.com>.
There is no information about the Respondent save that it has an address in the Cayman Islands and operates a website at the disputed domain name.
The disputed domain name was registered on June 3, 2012 and, as of December 7, 2012, it resolved to a website at which it offered for sale jewelry and accessories in competition with the Complainant, stating:
“Get designer jewelry shipped to your door monthly 95% off”.
5. Parties’ Contentions
The Complainant submits that:
- the disputed domain name is confusingly similar to its name and registered trademark ALEX AND ANI, differing from it only by the omission of the letter “D”;
- that omission constitutes “typosquatting” which numerous prior decisions under the Policy has recognized as constituting confusing similarity;
- it has not authorized, licensed or otherwise permitted the Respondent to use its trademark ALEX AND ANI or any confusingly similar variation of it;
- the Respondent is not commonly known by the disputed domain name;
- the Respondent is not using the domain name in connection with the bona fide offering of goods or services and is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain;
- the Respondent is using the disputed domain name to misleadingly direct internet users to a website at which it offers jewelry products in competition with the Complainant;
- the mere act of typosquatting is evidence of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the trademark ALEX AND ANI by reference to its substantial use, promotion and registration of it.
The disputed domain name is a word formed by the merger of the elements of the Complainant’s registered trademark, with the omission of the letter “D”. It thus forms a word which is almost identical in appearance to the Complainant’s trademark and which, furthermore, is quite likely to be almost identical in pronunciation due to the common tendency to elide the words in such a word string and omit the pronunciation of the letter “D”.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not sought to rebut the Complainant’s assertion that it has not authorized the Respondent to register the disputed domain name or to otherwise use its trademark. There is nothing to suggest that the Respondent might commonly be known by the disputed domain name, and it is evident that the Respondent’s use of the disputed domain name is not a legitimate non-commercial or fair use. The only use of the disputed domain name has been to divert Internet users to the Respondent’s own website at which it offers for sale goods of the same class as those offered by the Complainant. At the time the disputed domain name was registered the Complainant and its name and trademark were well and widely established throughout the United States. The inevitable conclusion is that the Respondent adopted the disputed domain name in full knowledge of the Complainant’s rights and reputation and is using it for commercial gain to misleadingly divert consumers to its competing website. That is not a use in the bona fide offering of goods or services.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
This is a case of typosquatting. As noted by the learned panel in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011:
“typoequatting, however, is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”.
It is self-evident, from the registration of the disputed domain name in that form, that the Respondent’s bad faith intent existed at the time of registration of the disputed domain name.
The use which the Respondent has subsequently made of the disputed domain name, to direct Internet users to its competing website, is a use which falls squarely within paragraph 4(b)(iv) of the Policy. It is therefore, by definition, use of the disputed domain name in bad faith.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
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 <alexanani.com> be transferred to the Complainant.
Desmond J. Ryan AM
Date: February 19, 2013