About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lokai Holdings LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Thien Nguyen Cong

Case No. D2020-1594

1. The Parties

The Complainant is Lokai Holdings LLC, United States of America (“United States”), represented by Tarter Krinsky & Drogin LLP, United States.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Thien Nguyen Cong, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <shoplokai.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2020. On June 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2020, 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 June 19, 2020 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 amendment to the Complaint on June 22, 2020.

The Center verified that the Complaint together with the amendment to 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 July 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2020.

The Center appointed Peter Burgstaller as the sole panelist in this matter on July 30, 2020. 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 offers especially bracelets, jewelry, rubber or silicon wristbands, water bottles, beverages, athletic apparel, sport bags, and backpacks under the trademark LOKAI on its website with the domain name <mylokai.com> (Annex 4 to the Complaint).

The Complainant is the owner of several trademarks containing the term LOKAI, e.g., United States registration numbers: 4429129 (figurative), dated November 5, 2013; 4637357 (word), dated November 11, 2014; 4742254 (figurative), dated March 26, 2015; 5355401 (word), dated December 12, 2017; 5715900 (word), dated April 2, 2019 (Annex 6 and 7 to the Complaint).

The Respondent has registered the disputed domain name on June 4, 2020; the WhoIs lookup indicates as Registrant Name “WhoisGuard Protected” and as Registrant Organization “WhoisGuard, Inc” (Annex 1 to the Complaint).

The disputed domain name addressed a website offering home textiles especially beach/leisure towels (Annex 8 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the following trademarks: (1) the trademark LOKAI which is used by the Complainant in connection with bracelets; jewelry; rubber or silicone wristbands in the nature of a bracelet, which is the subject of incontestable United States Trademark Registration No. 4429129 issued on November 5, 2013; (2) the trademark LOKAI which is used by the Complainant for retail store services featuring jewelry, which is the subject of US Trademark Registration No. 4637357 issued on November 11, 2014; (3) the trademark LOKAI (stylized) which is used by the Complainant for online retail store services featuring jewelry, which is the subject of United States Trademark Registration No. 4742254 issued on May 26, 2015, (4) the trademark LOKAI which is used by the Complainant in connection with water bottles sold empty and online retail store services featuring water bottles sold empty, which is the subject of United States Trademark Registration No. 5112859 issued on January 3, 2017; (5) the trademark LOKAI which is used by the Complainant in connection with backpacks, which is the subject of US Trademark Registration No. 5715900 issued on April 2, 2019; (6) the trademark LOKAI which is used by the Complainant in connection with athletic apparel, namely shirts, pants and jackets, which is the subject of United States Trademark Registration No. 5355401 issued on December 12, 2017, and (7) the trademark ELEMENTS BY LOKAI which is used by the Complainant in connection with flavored vitamin drink mixes; dietary supplemental flavored vitamin drinks in the nature of vitamin and mineral beverages; liquid nutritional supplements; vitamin and mineral liquid dietary supplements; vitamin and mineral dietary supplement drink mix and liquid herbal extracts not for medical purposes for infusion into beverages, which is the subject of United States Trademark Registration No. 5853518 issued on September 3, 2019.

Beginning in at least as early as 2013 with respect to jewelry, the Complainant has continuously used the applicable LOKAI trademarks in connection with the applicable LOKAI goods and LOKAI services. The Complainant offers the LOKAI goods for sale on its popular “www.mylokai.com” website and sells the LOKAI goods directly to retailers, who in turn offer the LOKAI goods in retail stores in the United States, Canada, Australia, and others. These efforts generate tens of millions of dollars in sales. The Complainant’s social media outreach includes active daily use of Google, Facebook, Twitter, Instagram, Amazon, and Pinterest.

The Complainant also designed a unique hang tag, which contains the LOKAI trademarks and which is copyrighted (copyright registration).

As a result of the Complainant’s extensive promotion and sales of the goods offered under the LOKAI trademarks, the LOKAI trademarks have become famous and consumers recognize that the goods offered and the services provided under the LOKAI trademarks originate from the Complainant. In other words, the LOKAI trademarks have obtained secondary meaning.

The Complainant has never dealt with the Respondent. The Respondent has registered and is using the disputed domain name in order to promote and sell beach quilt blankets. The Respondent, by using the disputed domain name, is falsely associating itself with the Complainant.

The Respondent is using the disputed domain name in connection with a website which entirely is designed to give the consumer the false impression that it is authorized by the Complainant. There is no bona fide business or commercial purpose for the Respondent to register and use the disputed domain name; the Respondent rather has registered and is using the disputed domain name with the intent to cause consumer confusion and to improperly divert consumers away from the Complainant’s website to the Respondent’s website.

The Respondent misappropriates and uses the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s use of the Complainant’s trademark in the disputed domain name is intended to cause Internet search engines to prominently list the Respondent’s website when Internet users conduct searches for goods and services offered and sold under the Complainant’s trademarks and to otherwise mislead consumers into believing that the Respondent’s website is somehow related to or authorized by the Complainant. This practice is not a genuine business or commercial purpose.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant’s registered trademarks LOKAI since it entirely contains this trademark and only prefix the dictionary term “shop”.

It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Finally, it has also long been held that suffixes such as a country code top-level domain (“ccTLD”) or generic Top-Level Domain ("gTLD") cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks LOKAI in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.

C. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy (e.g., Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and used in bad faith, must be demonstrated; consequently, the Complainant must show that the disputed domain name was registered by the Respondent in bad faith, and the disputed domain name is being used by the Respondent in bad faith.

The disputed domain name was registered on June 4, 2020; the Complainant has various trademark rights in LOKAI since 2013 onwards and offers its LOKAI-products especially on its website under the domain name <mylokai.com>.

The Panel is convinced that the Respondent has not registered the disputed domain name without knowledge of the Complainant’s rights; this impression is reinforced by the fact that the Respondent only prefixes the term “shop” to the Complainant’s trademark; the Respondent therefore not only uses the trademark LOKAI but also addresses the Complainant’s main sales channel – online retailing.

Moreover, the Respondent used privacy/proxy registration services: Although there are recognized legitimate uses of privacy/proxy registration services, but where it appears that respondent employs a privacy/proxy service merely to avoid being notified of a UDRP proceeding filed against it, UDRP panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference.

In the present case however, the Respondent did not file a Response; therefore, the facts of the present case lead this Panel to the conclusion that the Respondent merely employed a privacy/proxy service to hide its identity from potential disputes. In such cases the use of a privacy/proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant is also an indication of bad faith (see section 3.6 of the WIPO Overview 3.0).

These facts lead the Panel to the conclusion that the disputed domain name was registered in bad faith by the Respondent.

The disputed domain name moreover resolves to a website offering home textiles especially beach/leisure towels; all these products as well as the website are not connected to the Complainant.

The Respondent “free rides” on the reputation of the Complainant’s name and trademark LOKAI and thus the use of the disputed domain name is suited to divert or mislead potential web users from the website they are actually trying to visit (the Complainant’s site); moreover there is no plausible reason for authorized future active usage with regard to the disputed domain name by the Respondent.

On the basis of these facts, it is for the Panel incontestable that the disputed domain name is also being used in bad faith.

The Panel therefore finds that the Complainant has satisfied 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 name <shoplokai.com> be transferred to the Complainant.

Peter Burgstaller
Sole Panelist
Date: August 10, 2020

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/