WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lokai Holdings LLC v. Riyaz Ratnani / Domain Admin, Whois Privacy Corp
Case No. D2015-1971
1. The Parties
The Complainant is Lokai Holdings LLC of New York, New York, United States of America ("USA"), represented by Tarter Krinsky & Drogin LLP of New York, USA.
The Respondent is Domain Admin, Whois Privacy Corp of New Providence, Bahamas / Riyaz Ratnani of Batnam Raiu, Indonesia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <lokaiwholesale.com> is registered with TLD Registrar Solutions Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 2, 2015. On November 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2015, 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 November 4, 2015 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 November 6, 2015.
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 November 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2015. The Response was filed with the Center on November 17, 2015 and confirmed as being the Respondent's complete and final submission on November 21, 2015.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on November 30, 2015. 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
From as early as 2013, the Complainant has designed, manufactured, and sold bracelets, jewelry, and rubber or silicon wristbands under the LOKAI trademark and variations of the LOKAI trademark such as LIVE LOKAI, LOKAI (stylized), and LOKAI LENS (collectively "LOKAI").
The products carrying the LOKAI trademark and variations thereof are sold worldwide via the Complainant's website "www.mylokai.com" and through over 2,000 retail stores in, amongst others, the USA, Canada and Australia.
The Complainant has registered LOKAI and variations thereof in various countries, with registrations dating at least from 2013.
The disputed domain name was registered on September 1, 2015.
5. Parties' Contentions
The Complainant asserts that LOKAI is a well-known trademark. The Complainant contends further that the disputed domain name is confusingly similar to the Complainant's LOKAI trademark for the following reasons:
(a) the disputed domain name comprises the Complainant's LOKAI trademark as its dominant feature.
(b) the addition of the suffix "wholesale" does not detract from the overall impression formed by the public that the disputed domain name is owned by or related to the Complainant.
The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:
(a) The Respondent is not, in any way, related to the Complainant's business, is not one of its agents, and does not carry out any activity or have any business with the Complainant. The Complainant has not licensed or authorised the Respondent in any way to register or to use the disputed domain name. The Complainant has also never sold its goods bearing the LOKAI trademark to the Respondent.
(b) The disputed domain name is being used by the Respondent solely for commercial gain, to promote and sell LOKAI-branded bracelets that are identical to those sold by the Complainant.
(c) The disputed domain name resolves to a website designed to give the impression that it is authorised by the Complainant. The website contains the Complainant's tag line "Stay Balanced, Humble & Hopeful", the charitable statement used in the Complainant's sales and marketing materials that 10% of proceeds will be given back to the community, a word-for-word reproduction of certain statements found on the Complainant's own website at "www.mylokai.com", and identical bracelets with the LOKAI trademark for sale in similar colours as those that had been offered for sale by the Complainant.
The Complainant further contends that the Respondent registered and uses the disputed domain name in bad faith and relies on the following:
(a) The Complainant has not found any evidence to suggest that the Respondent has any rights or legitimate interests to the LOKAI trademark, including any license or authorization from the Complainant.
(b) The Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as the source, sponsorship, affiliation or endorsement of its website.
(c) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but is instead seeking to free-ride on the Complainant's reputation and goodwill in the LOKAI trademark. The disputed domain name will cause confusion and divert Internet users away from the Complainant's official website.
The Respondent asserts that there is no restriction against the Respondent from using the disputed domain name because the disputed domain name includes the generic top-level domain (gTLD) ".com", which "anyone can use".
The Respondent further contends that the Respondent has rights and legitimate interests to the disputed domain name for the following reasons:
(a) the Respondent, through PT Ratnanis Indo, a company based in Indonesia, has applied to the Directorate General of Intellectual Property Indonesia to register a mark containing the word "lokai" to be used on bracelets and that the LOKAI mark belongs to it in Indonesia.
(b) the Respondent's application was made on October 23, 2015, before the Respondent received the Complainant's complaint.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(c) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the LOKAI trademark. The LOKAI trademark is registered by the Complainant in various jurisdictions.
The suffix "wholesale" which follows the word "lokai" in the disputed domain name is a descriptive term which commonly refers to the sale of large quantities at low prices. It does not detract from the overall impression created by the disputed domain name, which suggests that items bearing the LOKAI trademark are being offered on a wholesale basis. The word "lokai" in the disputed domain name is the dominant feature of the disputed domain name.
The inclusion of the gTLD ".com" is inconsequential to determine similarities between domain names and trademarks for the purposes of the Policy.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's LOKAI trademark for the purposes of the Policy.
B. Rights or Legitimate Interests
The Panel is not satisfied with the Respondent's contention that the Respondent has rights or legitimate interests in the disputed domain name for the following reasons:
(a) The Respondent has not put forward any evidence to indicate that he is licensed or authorised by the Complainant to use the LOKAI trademark.
(b) The Respondent's argument that it has a right to the disputed domain name purely because it is within the ".com" space is not credible.
(c) The evidence adduced by the Respondent merely shows that an application was made to register a mark containing the word "lokai" in Indonesia by PT. Ratnanis Indo. No evidence has been submitted showing that this registration has been granted. Further, the Respondent did not adduce evidence to indicate that the Respondent has been formally authorised by the said applicant to use the mark containing the word "lokai" in Indonesia. However, even if the Indonesian filing had proceeded to registration and was in the Respondent's name, "it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy." Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847. The disputed domain name, as described below, has been used to create a false impression that it is authorized or owned by the Complainant, for the purposes of commercial gain. Such use, regardless of whether the Respondent is the owner of a relevant registration, is inconsistent with rights or legitimate interests under the Policy.
The Complainant asserts that the disputed domain name resolves to a website promoting and selling bracelets identical to those sold by the Complainant and which carry the LOKAI trademark, and hosts images and statements reproduced or copied from the Complainant's website. The Respondent did not rebut this allegation nor did the Respondent provide any convincing explanation as to why these images or statements were being reproduced or copied on the website to which the disputed domain name resolves. Further, the website at the disputed domain name contains no disclaimer of association with the Complainant.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
C. Registered and Used in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant's rights to the LOKAI trademark when it registered the disputed domain name.
The factors that were taken into account to arrive at this conclusion include:
(a) the date of registration of the disputed domain name was well after the Complainant started production and commercialization of its bracelets under the LOKAI trademark in 2013.
(b) the products sold by the Respondent through its website are identical to those sold by the Complainant on the Complainant's website.
(c) the use of the LOKAI trademark by the Complainant well before the disputed domain name was registered by the Respondent.
The Panel cannot find any justification for the registration and use of the disputed domain name in such circumstances except to find that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website. Policy paragraph 4(b)(iv).
As such, the Panel finds that bad faith registration and use has been demonstrated under paragraph 4(a)(iii) of the Policy.
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 <lokaiwholesale.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Date: December 13, 2015