WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Qalo, LLC v. Chen Jinjun

Case No. D2018-2215

1. The Parties

The Complainant is Qalo, LLC of Santa Ana, California, United States of America (“United States”), represented by Gabriel & Pelaez, PLLC (G&P), United States.

The Respondent is Chen Jinjun of Guangzhou, China.

2. The Domain Names and Registrar

The disputed domain names <qaloonlineshop.com> and <qaloonlinestore.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2018. On October 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 1, 2018, 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 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 October 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2018.

The Center appointed Cherise Valles as the sole panelist in this matter on November 13, 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

The Complainant is a jewelry company based in the United States with customers worldwide. As early as 2013, the Complainant adopted and began using the trademark QALO in connection with jewelry, largely sold on its website located at “www.qalo.com”.

The Complainant owns a number of trademarks in jurisdictions around the world for the term “qalo”, including the following:

- United States trademark No. 4410500 for QALO, registered on October 1, 2013, in class 14;

- United States trademark No. 5278208 for QALO (stylized), registered on August 29, 2017, in classes 14, 18, 25 and 35.

The Complainant’s QALO trademark is used, advertised, and promoted extensively throughout the United States and worldwide in connection with the Complainant’s jewelry and clothing, including in print, social media and Internet advertisements on the Complainant’s website located at “www.qalo.com” and elsewhere on the Internet.

The Respondent previously used the disputed domain names in connection with a phishing scam, holding itself out to be the Complainant. At the time of the Complaint and currently, the disputed domain names are being used in connection with commercial sales of various third party products.

The disputed domain names were both registered on August 21, 2018.

5. Parties’ Contentions

A. The Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain names are identical to the Complainant’s registered trademark, QALO, in light of the fact that they wholly incorporate the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain names.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain names. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain names have been registered and are being used in bad faith.

- The Complainant asserts that the disputed domain names were registered and are being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain names be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. The Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain names must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the owner of multiple registrations in jurisdictions throughout the world for the trademark QALO, as indicated in Section 4 above.

The disputed domain names wholly incorporate the Complainant’s QALO’s trademark. Earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish identity or confusing similarity for the purpose of the Policy. See Go Daddy.com, Inc. v. Shoneye’s Enterprise, WIPO Case No. D2007-1090.

Previous panels have also held that the Top-Level Domain “.com” is generally irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark.

In the light of the foregoing, the Panel finds that the disputed domain names <qaloonlineshop.com> and <qaloonlinestore.com> are confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain names, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous panels have established that in order to shift the burden of production to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain names. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

The Respondent does not own any trademark or service mark registration that is identical, similar, or in any way related to the disputed domain names or the QALO mark. The Respondent does not utilize a personal name, company name, or title that incorporates the QALO mark. The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the QALO trademark, in a domain name or otherwise. There is no commercial relationship between the Complainant and the Respondent which would entitle the Respondent to use or register the disputed domain names.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

Given that the disputed domain names incorporate the Complainant’s QALO trademark in full, and that the disputed domain names were previously used in a phishing scam which involved the Respondent holding itself out to be the Complainant, the Respondent appears to have registered the disputed domain names primarily for the purpose of disrupting the Complainant’s business. Furthermore, through the registration and use of the disputed domain names, the Respondent is attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Respondent evidently had prior knowledge of the Complainant’s rights in its QALO mark when it registered and began using the disputed domain names which wholly incorporate the QALO mark, particularly given that “qalo” is not a word in English (the language of the website to which the disputed domain names resolve). Such registration and use improperly play off the significant goodwill that the Complainant has established in its QALO mark. Previous panels have held that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain names under paragraph 4(a)(iii) 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 names <qaloonlineshop.com> and <qaloonlinestore.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: November 29, 2018