Crocs, Inc. v. [Registrant]

Claim Number: FA0707001043196



Complainant is Crocs, Inc. (“Complainant”), represented by Deborah Shinbein, of Faegre & Benson, LLP, 1700 Lincoln St., Suite 3200, Denver, CO 80203-4532.  Respondent is [Registrant] (“Respondent”), of Canada.



The domain name at issue is <>, registered with Enom, 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.


Judge Ralph Yachnin as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 20, 2007; the Forum received a hard copy of the Complaint on July 23, 2007.


On July 23, 2007, Enom, Inc. confirmed by e-mail to the Forum that the <> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).


On July 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 16, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).


Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.


On August 23, 2007 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed  Judge Ralph Yachnin as Panelist.


Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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


1.      Respondent’s <> domain name is confusingly similar to Complainant’s CROCS mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B. Respondent failed to submit a response in this proceeding.



Complainant, Crocs, Inc., designs, manufactures, and sells high quality, comfortable footwear throughout the world.  Complainant has conducted business under the CROCS mark since 2002 and currently sells its shoes at a variety of retail locations as well as online at the <> domain name.  Complainant holds trademark registrations for the CROCS mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA675,686) and the Australian Trademark Authority (Reg. No. 885,028).  Complainant also has a pending trademark application with the United States Patent and Trademark Office (“USPTO”) (App. No. 78/857,086).


Respondent registered the <> domain name on May 8, 2007.  Respondent’s disputed domain name resolves to a commercial website which prominently displays Complainant’s CROCS mark and offers Complainant’s products for sale.



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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(3) the domain name has been registered or is being used in bad faith.


Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.


Identical and/or Confusingly Similar


The Panel finds that Complainant’s registration of the CROCS mark with the CIPO and the Australian Trademark Authority, along with its pending trademark application with the USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i).  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").


Respondent’s <> domain name is confusingly similar to Complainant’s CROCS mark, as it includes the entire mark and merely adds the generic term “shoes” onto the mark, which is descriptive of Complainant’s products.  Under the Policy, the addition of a descriptive term onto a mark does not negate any confusing similarity between the mark and a corresponding disputed domain name.  Respondent’s disputed domain name also differs from the CROCS mark in that it includes the country code top-level domain (“ccTLD”) “.us.”  However, the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.  Therefore, the Panel finds that the <> domain name is confusingly similar to Complainant’s CROCS mark pursuant to Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under [UDRP] ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a [UDRP] ¶ 4(a)(i) analysis.”).


The Panel finds that Policy ¶ 4(a)(i) has been satisfied.


Rights or Legitimate Interests


Complainant alleges that Respondent lacks rights and legitimate interests in the <> domain name.  Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie showing in support of this allegation, and the burden then shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name.  In the present case, the Panel finds that Complainant has established a prima facie case under the Policy.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v., D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).


Based on Respondent’s failure to answer the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the <> domain name.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also 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.”).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).


As Complainant has established rights to the CROCS mark and Respondent has not come forward with any evidence showing it is the owner or beneficiary of a mark identical to the <> domain name, Complainant has satisfied Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).


Complainant asserts that Respondent is not authorized to use Complainant’s CROCS mark in any way and that Respondent is not associated with Complainant in any way.  In addition, Respondent’s WHOIS information does not indicate, and there is no other evidence in the record to suggest, that Respondent is commonly known by the <> domain name.  The Panel thus finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(iii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).


In addition, Respondent’s <> domain name redirects Internet users to a commercial website purporting to sell Complainant’s products.  The Panel infers that Respondent profits when users purchase items from this website.  This does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv), and is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).  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., 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 Policy ¶ 4(a)(ii) has been satisfied.


Registration and Use in Bad Faith


Respondent is using the disputed domain name to redirect Internet users, who are presumably seeking to purchase Complainant’s products, to Respondent’s own website, without permission or authorization from Complainant.  The Panel finds that such use constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).


Furthermore, Respondent is using the <> domain name, which is confusingly similar to Complainant’s CROCS mark, to operate a commercial website from which the Panel presumes that Respondent benefits commercially.  Respondent is therefore capitalizing on the likelihood that Internet users will be confused as to Complainant’s affiliation with the disputed domain name.  This is further evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v., FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <> domain name, in part, to provide products similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”).


The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.




Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.



Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)


Dated: September 2, 2007



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