Jack Schwartz Shoes, Inc., S4, LLC and S4 International, LLC v. Rubicon West Inc. c/o Roger Smith
Claim Number: FA0805001195661
Complainant is Jack Schwartz Shoes, Inc., S4, LLC and S4
International, LLC (“Complainant”),
represented by Maryann Penney of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Rubicon West Inc c/o Roger Smith (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sneaux.com>, registered with Dotster.
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 May 28, 2008; the National Arbitration Forum received a hard copy of the Complaint May 30, 2008.
On May 29, 2008, Dotster confirmed by e-mail to the National Arbitration Forum that the <sneaux.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster verified that Respondent is bound by the Dotster 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").
6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 26, 2008,
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 2, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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, <sneaux.com>, is identical to Complainant’s SNEAUX mark.
2. Respondent has no rights to or legitimate interests in the <sneaux.com> domain name.
3. Respondent registered and used the <sneaux.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Jack Schwartz Shoes, Inc. joins S4, LLC and S4 International, LLC as Complainant. Complainant has used the SNEAUX mark in connection with the promotion, advertising and sales of trendy sneakers, caps and shirts for men, women, and children. Complainant owns several trademark registrations around the world for the SNEAUX mark including one with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,131,293 issued August 15, 2006). Complainant’s predecessor-in-interest held a registered trademark with the USPTO for the SNEAUX mark that was registered in 1996 (Reg. No. 2,014,417 issued November 5, 1996), but the registration was subsequently cancelled following the transfer of rights to Complainant.
In addition, Complainant has issued several press releases dating back to as early as 1996 that have featured Complainant’s goods in several popular publications, including Women’s Wear Daily, Star Magazine, and Adweek. Complainant promotes its products online through the website resolving from its <sneauxshoes.com> domain name.
Respondent registered the <sneaux.com> domain name March 15, 1999. Respondent’s disputed domain name resolves to Respondent’s commercial website located at the <rubicon.com> domain name, which advertises a web-based curriculum management system.
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 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.
Complainant asserts rights in the SNEAUX mark through its
2006 USPTO trademark registration.
Previous panels have held that registration of a mark is prima facie evidence of a complainant’s
rights in that mark, and the Panel holds the same; Complainant’s current USPTO
trademark registration adequately confers rights in the SNEAUX mark pursuant to
Policy ¶ 4(a)(i).
Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007)
(“Complainant’s trademark registrations with the USPTO adequately demonstrate
its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); 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
Complainant also alleges that its SNEAUX mark has acquired substantial public recognition and goodwill, and the Panel agrees. Complainant’s products have been promoted in numerous magazines dating back to 1996, when Complainant’s predecessor-in-interest held a now-cancelled USPTO trademark registration for the SNEAUX mark. Complainant’s operation of the <sneauxshoes.com> domain name further illustrates the secondary meaning and recognition associated with the SNEAUX mark. These facts lead the Panel to conclude that Complainant sufficiently demonstrated common law rights in the SNEAUX mark pursuant to Policy ¶ 4(a)(i) dating back to 1996, thereby predating Respondent’s registration of the <sneaux.com> domain name in 1999. See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Respondent’s <sneaux.com> domain name contains Complainant’s SNEAUX mark in its entirety without any modifications. The disputed domain name also adds the generic top-level domain (“gTLD”) “.com,” but this fact is irrelevant since all domain names require a top-level domain. Therefore, the Panel finds that the <sneaux.com> domain name is identical to Complainant’s SNEAUX mark pursuant to Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
The Panel finds that Complainant satisfied the elements of Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights or legitimate interests in the <sneaux.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). Based upon the allegations made in the Complaint, the Panel finds that Complainant 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). Although Respondent has not responded to the Complaint, this Panel examines the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant submits evidence that Respondent is using the <sneaux.com> domain name to redirect Internet users to Respondent’s <rubicon.com> domain name that advertises Respondent’s web-based curriculum management system. While this use is unrelated to Complainant’s business, it is clear that Respondent is attempting to profit from the goodwill associated with Complainant’s SNEAUX mark. Such use is not permissible under the Policy, and is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). It is also a use that is inconsistent with a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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).”).
Complainant extensively argues that Respondent is not commonly known by the <sneaux.com> domain name. Complainant contends that SNEAUX is not Respondent’s personal or business name and it does not identify Respondent’s company with the public. The Panel notes that the WHOIS information identifies Respondent as “Rubicon West Inc. c/o Roger Smith,” which is consistent with Respondent’s use of the disputed domain name and further supports Complainant’s contention. Whether or not Respondent’s business name actually is Rubicon West Inc. is immaterial; what matters for these purposes is that Respondent does not appear to identify itself in any way as SNEAUX. Complainant further notes that Respondent is not licensed to or authorized to use Complainant’s SNEAUX mark and therefore does not have Complainant’s permission to use the mark. The totality of this evidence indicates that Respondent is not commonly known by the <sneaux.com> domain name, and therefore lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As mentioned above, Respondent is attempting to profit off the goodwill associated with Complainant’s SNEAUX mark. Respondent is trying to accomplish this by creating a likelihood of confusion surrounding the <sneaux.com> domain name and resolving website. Complainant correctly points out that its potential customers are likely to be confused as to the source, sponsorship, affiliation, or endorsement of Respondent’s resolving website. These facts all lead to the inference that Respondent’s registration and use of the <sneaux.com> domain name constitutes bad faith, and the Panel has reached this conclusion. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
The Panel finds that Complainant satisfied the requirements of 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 <sneaux.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 10, 2008.
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