Complainant is Lagom Kitchen Company, United States of America (“United States”), represented by Myers Wolin, LLC, United States.
Respondents are Thelma Thomas and Kane Lee, United States.
The disputed domain names, <always-pan.com>, <alwayspans.com>, and <alwayspan.shop>, are registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021 regarding the disputed domain names, <always-pan.com>, <always-pans.com>, <alwayspans.com>, <alwayspan.shop>, and <alwayspan-usa.com>. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 18, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 23, 2021 regarding the disputed domain names <always-pan.com>, <alwayspans.com>, and <alwayspan.shop>, and withdrew the other two domain names <always-pans.com> and <alwayspan-usa.com> from the proceeding.
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 Respondents of the Complaint, and the proceedings commenced on August 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. Respondents did not submit any response. Accordingly, the Center notified the Parties of Respondents’ default on September 22, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on October 12, 2021. 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.
Complainant is an American company that markets cookware under the ALWAYS PAN mark in the United States. It is the proprietor of United States Trademark Registration No. 6265423 for ALWAYS PAN (word mark), registered on February 9, 2021 for goods in class 21, claiming a date of first use of September 4, 2019. It operates an online shop at “www.fromourplace.com”.
The disputed domain names were registered by Respondent Thelma Thomas (“Respondent One”) on the following dates: <alwayspan.shop> on March 11, 2021 and <always-pan.com> on April 19, 2021. The disputed domain name <alwayspans.com> was registered by Respondent Kane Lee (“Respondent Two”) on May 1, 2021.
The disputed domain name <alwayspan.shop> resolves to a website offering for sale a single product, a pan identified as an “Always Pan”. The website identifies the entity operating the website as “www.alwayspan.shop”. The disputed domain name <always-pan.com> resolves to a website with a different appearance offering various types of cookware for sale, identifying the entity operating the website as “Always Pan,” stating “Our company was born in 2005, and was popular with American (sic) and Europe.” The disputed domain name <alwayspans.com> does not currently resolve to an active website.
Complainant’s contentions may be summarized as follows:
Complainant requests consolidation of the proceedings for the following reasons. All three disputed domain names are under the same control or owned by the same entity. Both named Respondents provide the same email address. The websites to which the disputed domain names resolve sell products identical to those listed in the Registration certificates for Complainant’s trademark, namely, pans, cookware and related goods.
Under the first element, Complainant states that it is the proprietor of a United States trademark registration for ALWAYS PAN, which it has used in the United States since 2019. Respondent One has copied the contents of Complainant’s website at “www.fromourplace.com” to create the website at <alwayspan.shop,> and uses similar photographs of pans at <always-pan.com> to create a confusingly similar website in which it purports to provide the same information and products. The third disputed domain name, <alwayspans.com>, resolves to a blank page with no business transacted and no legitimate commercial purpose. Respondents’ websites exist for the purpose of confusing customers and causing fraudulent transactions. Complainant has demanded that the contents of the websites of the disputed domain names be removed.
Under the second element, Complainant states that Respondents are engaged in the business of selling fake products and tarnishing the reputation of Complainant. The websites of the disputed domain names infringe on Complainants’ registered trademark and copyright rights. Complainant sought to contact Respondents through the Registrar, which provided no assistance.
Under the third element, Complainant states that it could not locate any legitimate purpose for the disputed domain names. They exist to defraud the public and to trade on the goodwill of Complainant. There is no indication that Respondents are engaging in any actual business transactions. Respondents’ contact email does not appear to be connected to a business. Complainant has initiated an investigation which indicates no conclusive evidence of a legitimate business at these websites.
Complainant requests transfer of the disputed domain names.
Respondents did not reply to Complainant’s contentions.
Pursuant to paragraph 10 of the Rules:
(a) the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
[…]
(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
The principles to assess a request to consolidate multiple respondents are set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
The Panel notes that there does not appear to be a concerted strategy in respect of the websites. The content of the two websites operated by Respondent One differ from each other. The website at <alwayspan.shop> contains images copied from Complainant’s website. The website at <always-pan.com> offers similar, but not identical, cookware products. The disputed domain name <alwayspans.com> registered by Respondent Two does not resolve to an active website.
Noting the circumstances of the case, and mindful of the approach of previous UDRP panels, however, the Panel finds it more likely than not that the three disputed domain names are under common control and that consolidation of the proceedings would be fair and equitable to both parties. See, for instance, WIPO Overview 3.0, section 4.11.2, and cases cited thereunder such as Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281. Most significantly, the email address of both Respondents as confirmed by the Registrar are identical, and both contact addresses provided are located within the United States. All three disputed domain names were registered using the same Registrar over a period of approximately two months immediately following the registration of the ALWAYS PAN trademark. All three disputed domain names employ the same naming pattern, namely, they feature Complainant’s ALWAYS PAN mark in an unaltered form. Respondents have not provided any evidence to challenge Complainant’s assertions. On such facts, the Panel accepts Complainant’s request to consolidate the present proceedings pursuant to the Rules, paragraph 10(e). Respondents One and Two are hereinafter referred to as “Respondent.”
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) Respondent has registered and is using the disputed domain names in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Complainant has provided evidence establishing that it has trademark rights in the ALWAYS PAN mark through registration in the United States. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.
In comparing Complainant’s ALWAYS PAN mark with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark. The disputed domain name <alwayspan.shop> is identical to Complainant’s mark. The disputed domain names <alwayspans.com> and <always-pan.com> comprise Complainant’s mark followed by the letter “s” or separated by a hyphen, respectively. It is the consensus view of UDRP panels that the addition of letters or symbols does not prevent a finding of confusing similarity because Complainant’s mark is clearly recognizable within the disputed domain name. See, for example, WIPO Overview 3.0, section 1.8, and cases cited thereunder.
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain, in this case, “.com” and “.shop,” to a disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
The circumstances stated in the Complaint and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain names.
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not authorized by Complainant and has no rights in the ALWAYS PAN mark. The disputed domain names contain Complainant’s mark, thereby suggesting sponsorship or endorsement by the trademark owner. Such use cannot confer rights or legitimate interests. See, for example, WIPO Overview 3.0, section 2.5.1.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names.
Respondent has not proved rights or legitimate interests. There is no evidence that Respondent is commonly known by the disputed domain names, nor that there are any circumstances or activities that would establish Respondent’s rights therein. The disputed domain name <alwayspan.shop> resolves to a website displaying images copied from Complainant’s website. The disputed domain name <always-pan.com> resolves to a website offering similar products for sale and purporting to be offered by an entity holding itself out as “Always Pan.” The disputed domain name <alwayspans.com> is inactive. There is no evidence that the disputed domain names have been registered or are being used for legitimate noncommercial purposes. See WIPO Overview 3.0, section 2.1, and cases cited thereunder.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
Pursuant to paragraph 4(b) of the Policy, the Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain names. Complainant’s rights in its ALWAYS PAN mark predate the registration of all three disputed domain names. The three disputed domain names reflect Complainant’s ALWAYS PAN mark in its entirety, and the content of the two websites clearly imply a link with Complainant’s mark and business. The timing of the registrations, namely, in close proximity to each other and immediately following the date that the ALWAYS PAN mark was registered in the United States, is further indicative of bad faith registration.
Turning to use of the disputed domain names, the Panel finds that Complainant has demonstrated Respondent’s bad faith in use of the disputed domain names <alwayspan.shop> and <always-pan.com>. The contents of the websites demonstrate Respondent’s attempt to impersonate Complainant or create an association with Complainant for commercial gain.
The Panel further finds that Respondent has, on balance, demonstrated bad faith by passive holding of the disputed domain name <alwayspans.com>. Such a finding is consistent with previous UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also WIPO Overview 3.0, section 3.3. In particular, the disputed domain name <alwayspans.com> is nearly identical to Complainant’s registered trademark. Respondent has concealed its identity and failed to provide any evidence of a connection to a legitimate business related to the ALWAYS PAN mark. The Panel finds that Respondent has in a short period of time registered three domain names targeting Complainant’s mark and has failed to provide any evidence of actual or contemplated good-faith use of any of the disputed domain names. Under the circumstances, the Panel does not find any such use plausible.
The Panel therefore finds that, on balance, Complainant has established the third element under paragraph 4(a) 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 names <always-pan.com>, <alwayspans.com>, and <alwayspan.shop> be transferred to Complainant.
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: October 25, 2021