Allen-Edmonds Shoe Corp. v. Adtelect Consulting Inc.
Claim Number: FA0807001213414
Complainant is Allen-Edmonds
Shoe Corp. (“Complainant”), represented by Brian G Gilpin of Godfrey & Kahn S.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allenedmondsshoestore.com>, registered with GoDaddy.com.
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 July 1, 2008; the National Arbitration Forum received a hard copy of the Complaint July 2, 2008.
On July 1, 2008, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <allenedmondsshoestore.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com verified that Respondent is bound by the GoDaddy.com 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 July 2, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of July 22, 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 29, 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, <allenedmondsshoestore.com>, is confusingly similar to Complainant’s ALLEN EDMONDS mark.
2. Respondent has no rights to or legitimate interests in the <allenedmondsshoestore.com> domain name.
3. Respondent registered and used the <allenedmondsshoestore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Allen-Edmonds Shoe Corp., is a manufacturer of men’s footwear, belts, and accessories with retail and manufacturing operations worldwide. Since 1920, Complainant has spent considerable resources in developing its products and services. Complainant registered its ALLEN EDMONDS mark with various governmental trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 822,911 issued January 24, 1967) and the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA286,266 issued December 30, 1983).
Respondent registered the <allenedmondsshoestore.com> domain name May 22, 2007, and is using the disputed domain name to resolve to a website that features third-party hyperlinks to Complainant’s direct competitors.
Respondent has been the respondent in prior UDRP decisions in which the disputed domain names were transferred to the respective complainants in those cases.
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.
The Panel finds that Complainant set forth sufficient
evidence of its rights in the ALLEN EDMONDS mark through its registration with
the USPTO and the Canadian trademark authority pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685
(Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established
rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks
with the USPTO); see also Miller Brewing
Respondent’s <allenedmondsshoestore.com> domain
name merely incorporates Complainant’s entire ALLEN EDMONDS mark while adding
the generic phrase “shoestore” and the generic top-level domain (“gTLD”)
“.com.” The gTLD is an immaterial
addition under Policy ¶ 4(a)(i).
Moreover, the addition of a generic word or phrase that describes
Complainant’s area of commerce does not distinguish a disputed domain
name. Such is the case here, as
Complainant aptly runs a shoe store operation.
Therefore, the Panel finds that Respondent’s <allenedmondsshoestore.com>
domain name is confusingly similar to Complainant’s ALLEN EDMONDS mark under
Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Because the Panel finds that Complainant met its burden of setting forth a prima facie case that supports its allegations that Respondent lacks rights and legitimate interests in the disputed domain name, the burden shifts to Respondent to demonstrate its rights or legitimate interests. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).
Respondent has not supplied any evidence that it is commonly known by the disputed domain name. The registrant of record under the WHOIS information is listed as “Adtelect Consulting, Inc.,” which bears no resemblance with the disputed domain name. Moreover, the record contains no evidence that Complainant granted any license or permission to Respondent to use Complainant’s mark in any fashion. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Respondent’s disputed domain name resolves to a website that displays advertisements for Complainant’s direct competitors. The Panel finds that Respondent’s presumed commercial use of the disputed domain name to garner “click-through” referral fees fails to constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 the elements of ICANN Policy ¶ 4(a)(ii).
Respondent has been the respondent in prior UDRP decisions
in which the disputed domain names were transferred to the respective
complainants in those cases. See Orvis
Co. Inc. v Adtelect Consulting Inc., FA 1045274, (Nat. Arb. Forum Sept. 2,
2007). The Panel finds that Respondent
has engaged in a pattern of preventing trademark holders from reflecting their
marks in corresponding domain names, which is evidence of bad faith
registration and use under Policy ¶ 4(b)(ii).
See Westcoast Contempo Fashions Ltd. v.
domain name resolves to a website that promotes Complainant’s direct
competitors through hyperlinks. The
Panel finds that Respondent primarily intended the disruption of Complainant’s
business, which also supports findings of Respondent’s bad faith registration
and use under Policy ¶ 4(b)(iii). See David
The Panel presumes that Respondent is commercially
benefiting from the placement of these third-party links through the receipt of
referral fees. Therefore, the Panel
finds that Respondent’s confusingly similar disputed domain name has created a
likelihood of confusion as to Complainant’s source or affiliation with the
disputed domain name and corresponding website, which evidences Respondent’s
bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also Asbury Auto. Group, Inc. v.
The Panel finds that Complainant satisfied the elements of ICANN 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 <allenedmondsshoestore.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 8, 2008.
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