SR Holdings, Inc. v. Comdot Internet Services Private Limited
Claim Number: FA0709001079862
Complainant is SR Holdings, Inc. (“Complainant”), represented by Linda
M. Novak, of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sperryshoes.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On October 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 13, 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 firstname.lastname@example.org by e-mail.
Having received no timely response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
After the deadline, Respondent did respond to the Complaint. Although the National Arbitration Forum does not consider the Response to be in compliance with Paragraph 5 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), it will nevertheless be considered. Complaint thereafter filed an Additional Submission. In light of the Panel’s ruling in this matter it is unnecessary to consider Complainant’s Additional Submission.
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 "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 <sperryshoes.com> domain name is confusingly similar to Complainant’s SPERRY mark.
2. Respondent does not have any rights or legitimate interests in the <sperryshoes.com> domain name.
3. Respondent registered and used the <sperryshoes.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding. Respondent’s arguments will nevertheless be considered where appropriate to do so.
Complainant has continuously used the SPERRY mark since as early as 1939 in connection with shoes, footwear, shirts, and retail footwear services. It currently holds registration of the SPERRY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 732,519 issued June 5, 1962).
Respondent’s <sperryshoes.com> domain name was registered on September 29, 2000 and resolves to a web directory featuring links to various third-parties, some of which offer products and services in competition with those offered under Complainant’s mark.
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 timely 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 has sufficiently established its rights in the
SPERRY mark through registration with the USPTO pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Respondent’s <sperryshoes.com> domain name contains Complainant’s SPERRY mark in its entirety and then includes the generic term “shoes,” which has an obvious relationship to the products offered under Complainant’s mark. The disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” The inclusion of a gTLD and a generic descriptive term does not distinguish a disputed domain name from a mark under the Policy. As a result, the Panel finds that pursuant to Policy ¶ 4(a)(i), Respondent’s <sperryshoes.com> domain name is confusingly similar to Complainant’s SPERRY mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also 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).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. See VeriSign Inc. v. VeneSign
No timely Response has been submitted to the Complaint. Accordingly, the Panel presumes that Respondent has no rights or legitimate interests, but will still examine the record in consideration of the factors listed under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Neither Respondent’s WHOIS information nor anything else in the record gives any indication that Respondent is or ever was commonly known by the disputed domain name. Moreover, Complainant has not granted permission to Respondent to use its mark in any way. Absent any affirmative evidence to the contrary, the Panel finds pursuant to Policy ¶ 4(c)(ii), that Respondent is not commonly known by the <sperryshoes.com> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Respondent’s <sperryshoes.com> domain name contains Complainant’s mark in its entirety and resolves to a web directory that features links to various third-parties, many of which offer products and services in competition with those offered under Complainant’s SPERRY mark. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
domain name features various links to third-parties, many of which offer
services and products in direct competition with those offered under
Complainant’s mark. The Panel finds this
to establish Respondent’s bad faith registration and use of the disputed domain
name to disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Furthermore, the Panel presumes that Respondent is commercially benefiting from every misdirected Internet user who clicks on a link on Respondent’s website that resolves from the disputed domain name through the use of “click-through” fees. Consequently, the Panel finds this to be additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); 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 concludes 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 <sperryshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
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National Arbitration Forum
 Respondent states that “Sperry” is “such a common word that the complainant cannot claim any rights to the said word.” Respondent’s argument ignores that fact that Complaint has established its rights within the meaning of Policy ¶ 4(a)(i) by registration with the USPTO.
 Respondent states that it has a legitimate interest in the domain name because “as they have paid a huge sum to purchase the domain from the previous owner.” This is not a reason that qualifies under the Policy as constituting “rights or legitimate interests.”
 Respondent denies that it is using the site as claimed in the Complaint. An inspection of the site reveals that this statement is false.