Crocs, Inc. v. Chadd Chustz
Claim Number: FA0706001002536
Complainant is Crocs, Inc. (“Complainant”), represented by Deborah
Shinbein, of Faegre & Benson, LLP, 1700 Lincoln
St., Suite 3200, Denver, CO 80203-4532.
Respondent is Chadd Chustz (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crocsshoes.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 11, 2007.
On June 8, 2007, Go Daddy Software, Inc., confirmed by e-mail to the National Arbitration Forum that the <crocsshoes.com> domain name is registered with Go Daddy Software, Inc., and that Respondent is the current registrant of the name. Go Daddy Software, Inc., has verified that Respondent is bound by the Go Daddy Software, Inc., registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 3, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 10, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <crocsshoes.com> domain name is confusingly similar to Complainant’s CROCS mark.
2. Respondent does not have any rights or legitimate interests in the <crocsshoes.com> domain name.
3. Respondent registered and used the <crocsshoes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Crocs, Inc., has been selling quality, comfortable footwear in distinctively vibrant colors under the CROCS mark since 2002. Complainant’s CROCS shoes are currently sold in over 40 countries and an estimated 22 million pairs were sold in 2006 with projected retail sales of 35 million pairs in 2007. Complainant also operates a website at the <crocs.com> domain name for use in promotion and sale of its CROCS footwear and related products. Complainant has used the CROCS mark in the promotion and advertisement of goods and services sold and offered for sale under the CROCS mark.
Respondent registered the <crocsshoes.com> domain name on May 24, 2004. Respondent’s domain name presently resolves to a commercial website offering Complainant’s products and those of Complainant’s competitors for purchase. While Respondent is an authorized reseller of Complainant’s CROCS products, Respondent is not authorized to utilize Complainant’s CROCS mark in a domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In considering whether the complainant has sufficiently established rights in a mark, panels have repeatedly held that trademark registration is not required under Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
While evidence in the record demonstrates Complainant holds numerous international registrations for the CROCS mark and many pending applications, the record lacks sufficient evidence of the registration date for any of the submitted trademarks. The Panel, however, finds that Complainant has established common law rights in the CROCS mark pursuant to Policy ¶ 4(a)(1) through the continuous and extensive use of the CROCS mark since July 2002. Complainant’s diverse global customer base, providing goods and services under the CROCS mark in over 40 countries; extensive list of currently held and pending trademark registrations worldwide; evidence of sales in millions of pairs sold; and promotion and advertisement of the CROCS mark since July 2002 are sufficient to permit the Panel to find Complainant’s CROCS mark has acquired secondary meaning and accord the Complainant with common law rights in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Considering Respondent’s incorporation of Complainant’s CROCS mark in the <crocsshoes.com> domain name, the Panel determines Respondent’s domain name bears a confusing similarity to Complainant’s CROCS mark. Respondent’s <crocsshoes.com> domain name makes use of Complainant’s CROCS mark in its entirety coupled with the generic or descriptive word “shoes,” a term which describes Complainant’s business. The addition of a common term to Complainant’s mark is not sufficient to remove the confusing similarity between Complainant’s CROCS mark and Respondent’s disputed domain name. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). Further, the presence of the generic “.com” top-level domain fails to effectively distinguish Respondent’s <crocsshoes.com> domain name from Complainant’s CROCS mark since all domain names must contain a top-level domain element. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Before Respondent is required to supply evidence demonstrating rights or legitimate interests in the disputed domain name, Complainant must first make a prima facie case demonstrating Respondent’s lack thereof. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations); see also F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). Finding Complainant has proffered sufficient evidence to satisfy the requisite initial showing, the Panel now turns to examine whether Respondent has rights or legitimate interests in the <crocsshoes.com> domain name.
In light of Respondent’s failure to respond to the Complaint, the Panel may infer that Respondent holds no rights or legitimate interests in the <crocsshoes.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested the allegation . . . that the Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of the Complainant’s mark BANCO DO BRASIL”). However, the Panel will now determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
While evidence in the record suggests Complainant has
authorized Respondent to sell Complainant’s goods bearing the CROCS mark,
Complainant has not authorized Respondent to use the CROCS mark in conjunction
with a domain name. See
Further, Respondent’s <crocsshoes.com> domain name resolves to a commercial website displaying Complainant’s CROCS products alongside those of Complainant’s competitors. The Panel infers that Respondent is attempting to misappropriate Internet traffic seeking Complainant’s site for Respondent’s own commercial gain through the incorporation of Complainant’s CROCS mark in the disputed domain name. Such use by Respondent does not comport with Policy ¶ 4(c)(i) as a bona fide offering of goods or services or Policy ¶ 4(c)(iii) as a legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s unauthorized use of Complainant’s CROCS mark in the <crocsshoes.com> domain name, a domain name which redirects Internet users to Respondent’s own commercial site, evidences bad faith registration and use by intentionally disrupting Complainant’s business through the confusing similarity between Respondent’s domain name and Complainant’s CROCS mark in violation of Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (finding that the respondent’s use of the KIOTI mark within a domain name without express authorization from the complainant violated the terms of the respondent’s licensing agreement and evidenced bad faith use of the domain name); see also Gorstew Ltd. v. Carribean Tours & Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (finding that the respondent’s use of the disputed domain name to sell the services of the complainant or to attract customers to the complainant, presumably for which the respondents would be paid a fee, is classic trademark infringement, even if the result of same is that some revenue flows to the complainant, the owner of the marks).
The Panel also infers that Respondent’s unauthorized use of Complainant’s CROCS mark evidences an attempt by Respondent to commercially benefit through the confusing similarity between Respondent’s <crocsshoes.com> domain name and Complainant’s CROCS mark, capitalizing on the illusion of direct affiliation with Complainant’s business and goodwill through Respondent’s unauthorized incorporation of Complainant’s CROCS mark in the disputed domain name. This suggests to the Panel further evidence of Respondent’s bad faith use and registration of the disputed domain name under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <crocsshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 24, 2007
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