Oddball Shoe Company v. Loyal Internet Group
Claim Number: FA0707001045239
Complainant is Oddball Shoe Company (“Complainant”), represented by Rebecca
A. Thiebes, of Foster Pepper LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <oddballshoes.com>, registered with Tucows 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 27, 2007.
On July 25, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <oddballshoes.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 August 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 4, 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 postmaster@oddballshoes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 <oddballshoes.com> domain name is confusingly similar to Complainant’s ODDBALL SHOE CO. mark.
2. Respondent does not have any rights or legitimate interests in the <oddballshoes.com> domain name.
3. Respondent registered and used the <oddballshoes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Oddball Shoe Company, specializes in selling multiple brands of oversized men’s shoes, sizes thirteen and above. Complainant has used the ODDBALL SHOE CO. mark in commerce to market its shoes since May 1, 1997, and has a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the mark (Reg. No. 2,232,345 issued March 16, 1999).
Respondent, Loyal Internet Group, registered the <oddballshoes.com> domain name on February 15, 2002. Respondent is not making any use of the disputed 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.
Complainant alleges rights to the ODDBALL SHOE CO. mark
through its valid trademark registration with the USPTO. The Panel finds this to be conclusive
evidence that Complainant has established rights to the ODDBALL SHOE CO. mark
pursuant to Policy ¶ 4(a)(i). See Diners Club Int’l Ltd. v.
Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (conferring
rights in the DINERS mark to the complainant based upon its USPTO trademark
registration); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding
that the complainant’s registration with the USPTO for the
Respondent’s <oddballshoes.com>
domain name contains the dominant portion of Complainant’s ODDBALL SHOE CO.
mark with minor variations: Respondent pluralizes “shoes” and removes the “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <oddballshoes.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly
known by the <oddballshoes.com>
domain name, and the Panel agrees. The
WHOIS information identifies Respondent as “Loyal Internet Group,” and there is
no other evidence in the record indicating that Respondent is commonly known by
the disputed domain name. Therefore, the
Panel concludes that Respondent is not commonly known by the <oddballshoes.com> domain name
pursuant to Policy ¶ 4(c)(ii). See
Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17,
2006) (concluding that the respondent was not commonly known by the
<coppertown.com> domain name where there was no evidence in the record,
including the WHOIS information, suggesting that the respondent was commonly
known by the disputed domain name); see also M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Aug. 3, 2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record).
Respondent is not making any use
of the <oddballshoes.com>
domain name. Furthermore, there is no
evidence in the record indicating that Respondent has ever made any use of the
disputed domain name since Respondent first registered it five years ago. The Panel finds that Respondent’s failure to
use the <oddballshoes.com>
domain name for five years does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
TMP Int’l, Inc. v. Baker Enters.,
FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that
Respondent's passive holding of the domain name does not establish rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat.
Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the
<aolfact.com> domain name for over six months is evidence that Respondent
lacks rights and legitimate interests in the domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has not made any use of the <oddballshoes.com> domain name since its registration date. Respondent’s failure to use the disputed domain name for five years constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oddballshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 10, 2007
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