WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kat Von D, Inc. v. Vietnam Domain Privacy Services / Pham Dinh Nhut
Case No. D2017-2546
1. The Parties
Complainant is Kat Von D, Inc. of North Hollywood, California, United States of America ("USA" or "United States"), represented by Sideman & Bancroft LLP, USA.
Respondent is Vietnam Domain Privacy Services of Ho Chi Minh City, Viet Nam / Pham Dinh Nhut of Ho Chi Minh City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <catvond.com> (the "Domain Name") is registered with April Sea Information Technology Corporation (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on December 21, 2017. On December 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 29, 2017, 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 and contact information in the Complaint.
The Center sent an email communication to Complainant on January 2, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Vietnamese to the Parties regarding the language of the proceeding. Complainant filed an amended Complaint and requested that English be the language of the proceeding on January 5, 2018. Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Vietnamese of the Complaint, and the proceedings commenced on January 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 29, 2018.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on February 2, 2018. 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 is the owner of a number of registered trademarks and common law trademarks, trade names, related logos and design marks, to identify its goods and services for the mark KAT VON D ("Complainant's Trademarks"). Among Complainant's Trademarks is the KAT VON D word mark, United States Registration No. 4130419, registered on April 24, 2012.
KAT VON D is the commercial brand of Katherine von Drachenberg (a.k.a. "Kat Von D"), a well‑known tattoo and makeup artist.
According to WhoIs the Domain Name was registered on February 13, 2006. Currently, the Domain Name resolves to a parked website displaying links to products related to tattoo artistry.
5. Parties' Contentions
Complainant asserts that Kat Von D became well known through her television and movie appearances, beginning with the popular reality TV show, Miami Ink, which premiered in 2005 and followed the events that took place at a tattoo parlor in Miami Beach, Florida, USA.
Kat Von D subsequently produced her own reality spin-off series, LA Ink, which chronicled the events at Kat Von D's own West Hollywood tattoo shop, High Voltage Tattoo. LA Ink aired from August 2007 to September 2011. Kat Von D has also appeared as a guest on a number of other TV shows, including Late Night with Jimmy Fallon, Last Call with Carson Daly, Rachel Ray, Jimmy Kimmel Live, Late Show with David Letterman, and The Ellen DeGeneres Show.
Complainant states that having gained worldwide popularity as a TV personality, tattoo and makeup artist, Kat Von D also launched Kat Von D Beauty around May 2008, a cosmetics line inspired by Kat Von D's tattoo designs, in partnership with popular cosmetics retailer Sephora.
Complainant contends that today Kat Von D Beauty is one of Sephora's top selling brands, and has one of the largest followings of any beauty brand on social media. Meanwhile, Kat Von D has continued to offer and promote highly sought after tattoo services and related merchandise under the KAT VON D brand at her High Voltage Tattoo parlor and elsewhere.
Since at least 1998, Complainant's Trademarks have been consistently used with various goods and services, including tattoo artistry and related services, clothing, cosmetics books, posters and other merchandise.
Complainant asserts that as a result of its extensive marketing and promotion, Complainant's Trademarks are strong and distinctive indicators of source of Complainant's products and services.
Complainant states that the Domain Name is identical to Complainant's Trademarks except for the substitution of the first letter "C" of the Domain Name in place of "K." Complainant contends that Respondent by misspelling KAT VON D using a phonetic equivalent is "typosquatting" and intending to capitalize on the substantial goodwill in Complainant's Trademarks by using them to attract attention to the Domain Name thereby confusing consumers and causing the average Internet user to assume, wrongly, that Respondent is affiliated with, sponsored by, or otherwise related to Complainant.
Complainant argues that the likelihood of confusion is further enhanced by the fact that Respondent uses the Domain Name as a parking site, with links to products related to tattoo artistry — services that are identical to services offered by Complainant.
Complainant further contends that Respondent does not appear to have any legitimate business or other use for the Domain Name and, on information and belief, Respondent does not operate a legitimate business under the name "Cat Von D" or offer goods or services under that name. There is no evidence that Respondent has ever made fair use of the Domain Name for a legitimate purpose.
Complainant finally states that the Domain Name is a classic case of typosquatting which is recognized as a bad faith use and that the Domain Name was registered in bad faith as Kat Von D was famous with the show Miami Ink from July 2005 onwards.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established to the satisfaction of the Panel that Complainant's Trademarks have been used and/or registered since at least 2012 in relation to tattoo artistry and related goods and services and that the artist Kat Von D is well known through her television and other public appearances.
Complainant contends that the Domain Name is identical to Complainant's Trademarks except for the substitution of the first letter "C" of the Domain Name in place of "K." Complainant argues that by misspelling KAT VON D in this way Respondent is "typosquatting" and its purpose is to capitalize on the goodwill in Complainant's Trademarks. Complainant therefore submits that consumers would be confused.
There is clear merit in these submissions and in the absence of any attempt to refute them it is found that:
a) Complainant has rights in respect of Complainant's Trademarks.
b) The Domain Name is not identical to but for the reasons set out above confusingly similar to Complainant's Trademarks.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
As noted above, Complainant contends that Respondent is using the Domain Name on a parking site, with links to products related to tattoo artistry. These are obviously services that are identical to services offered by Complainant.
This permits the Panel to infer that Respondent lacks rights or legitimate interests in the Domain Name. It is apparent that by virtue of Complainant's trademark rights and business interests in relation to tattoo artistry that an unrelated entity using a similar domain name is likely to lead to members of the public being confused and deceived.
It is reasonable to infer that Respondent's use the Domain Name will attract Internet traffic and that the Domain Name has been employed as a means of diverting Internet customers. In those circumstances, it is difficult to see how Respondent's conduct could be characterized as legitimate.
On this basis, it is found that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
While the Panel notes that the Domain Name was registered in 2006, and Complainant's Trademarks in 2012, Complainant has provided evidence that she became famous as of 2005, and has established common law trademark rights for the purpose of the Policy. In view of this, it is found that Respondent has registered the Domain Name in 2006 in bad faith.
The Panel concludes that Respondent has intentionally attempted to attract for commercial gain Internet users to a parking site not related to Complainant and thereby creating a likelihood of confusion with Complainant and/or Complainant's Trademark.
The Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Internet users who may wish to communicate with or use Complainant's tattooing and related goods and services and that these Internet users are likely to be attracted to the any pages, landing sites or other online presence and be misled as to their origins, sponsorship or association.
The Panel thus finds that the third limb of the Policy has been met.
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 <catvond.com> be transferred to Complainant.
Clive L. Elliott QC
Date: February 21, 2018