Oddball Shoe Company v. Texas International Property Associates
Claim Number: FA0708001061005
Complainant is Oddball Shoe Company (“Complainant”), represented by Rebecca A. Thiebes of Foster Pepper LLP, 601 SW Second Ave., Ste. 1800, Portland, OR, 97204. Respondent is Texas International Property Associates (“Respondent”), 4041 W. Wheatland Suite 156-417, Dallas, TX 75237.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <oddballshoecompany.com>, registered with Compana, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 10, 2007; the National Arbitration Forum received a hard copy of the Complaint August 13, 2007.
On August 13, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <oddballshoecompany.com> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name. Compana, LLC verified that Respondent is bound by the Compana, LLC registration agreement and thereby has 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 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 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@oddballshoecompany.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 14, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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. The domain name that Respondent registered, <oddballshoecompany.com>, is confusingly similar to Complainant’s ODDBALL SHOE CO. mark.
2. Respondent has no rights to or legitimate interests in the <oddballshoecompany.com> domain name.
3. Respondent registered and used the <oddballshoecompany.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Oddball Shoe Company, is a company that specializes in selling multiple brands of oversized men’s shoes, as well as regular-sized men’s, women’s, and children’s shoes. Complainant has retail stores as well as an online presence, located at the <oddballshoe.com> domain name. Additionally, Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the ODDBALL SHOE CO. mark (Reg. No. 2.232,345 issued March 16, 1999).
Respondent registered the <oddballshoecompany.com> domain name December 20, 2005. Respondent’s disputed domain name resolves to a website that displays various hyperlinks to third-party websites in direct competition with Complainant.
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."
Given 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 will draw such inferences as the Panel considers to be 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 Complainant to 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.
The Panel finds that Complainant’s registration of the ODDBALL SHOE CO. mark with the USPTO over eight years ago adequately establishes Complainant’s rights to and legitimate interests in the mark for the purposes of Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
The Panel holds that the <oddballshoecompany.com> domain name is confusingly similar to Complainant’s ODDBALL SHOE CO. mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark with the modification of spelling out the last word in Complainant’s mark. As Complainant’s mark contains the abbreviation of the word “company,” the disputed domain name is confusingly similar to Complainant’s mark. The modification and the addition of the generic top-level domain (“gTLD”) “.com,” do not adequately distinguish the disputed domain name from Complainant’s mark. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also 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 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 Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Complainant satisfied Policy ¶
4(a)(i).
Complainant is required to make a prima facie case that Respondent lacks rights and legitimate interests in the <oddballshoecompany.com> domain name. Under Policy ¶ 4(a)(ii), if Complainant can satisfy that burden, as the Panel finds that Complainant has done here, the burden shifts to Respondent to demonstrate rights or legitimate interests under Policy ¶ 4(a)(ii). 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s WHOIS information indicates that Respondent is “Texas International Property Associates,” and no other information in the record indicates that Respondent is commonly known by the <oddballshoecompany.com> domain name or that Complainant has authorized Respondent to use Complainant’s ODDBALL SHOE CO. mark in any way. The Panel finds further that no evidence demonstrates that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).
The website that resolves from the <oddballshoecompany.com> domain name displays hyperlinks to websites in direct competition with Complainant. Respondent’s use of the disputed domain name is presumably for Respondent’s own commercial gain through the earning of click-through fees. Such use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it does not constitute a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The <oddballshoecompany.com> domain name, which is confusingly similar to Complainant’s mark, is capable of creating a likelihood of confusion as to Complainant’s source, sponsorship, affiliation or endorsement with the disputed domain name and corresponding website. Moreover, as discussed above, Respondent likely earns click-through fees for the operation of the website that resolves from the disputed domain name. The Panel finds this evidence sufficient to support findings of bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Additionally, as the <oddballshoecompany.com> domain name displays hyperlinks to businesses in direct competition with Complainant, the Panel finds that a disruption of Complainant’s business is occurring, providing further evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The Panel finds that Complainant 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 <oddballshoecompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 28, 2007.
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