Rocky Brands, Inc. v. Gioacchino Zerbo
Claim Number: FA0811001233952
Complainant is Rocky Brands, Inc. (“Complainant”), represented by Robert
J. Morgan, of Porter, Wright, Morris & Arthur LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rockyboot.com>, registered with Dotster.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 21, 2008.
On November 14, 2008, Dotster confirmed by e-mail to the National Arbitration Forum that the <rockyboot.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 November 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 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 postmaster@rockyboot.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <rockyboot.com> domain name is confusingly similar to Complainant’s ROCKY BOOTS mark.
2. Respondent does not have any rights or legitimate interests in the <rockyboot.com> domain name.
3. Respondent registered and used the <rockyboot.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Rocky Brands, Inc., is a retailer of clothing and accessories, and has promoted footwear under the ROCKY BOOTS mark since 1976. Complainant owns several trademark registrations for the ROCKY mark (i.e. Reg. No. 1,577,871 issued January 16, 1990) and the ROCKY BOOTS mark (i.e. 1,313,519 issued January 8, 1985), both of which have been registered with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the disputed <rockyboot.com> domain name on June 25, 2003, and is using the disputed domain name to host third-party links for Complainant’s direct footwear competitors.
Respondent has been the respondent in several other UDRP
proceedings in which the disputed domain names were transferred to the
complainants in those cases. See e.g., Alpitour S.p.A. v. Zerbo, FA 767519
(Nat. Arb. Forum Sept. 22, 2006); see
also
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.
The Panel finds that Complainant’s registration of the ROCKY BOOTS mark with the USPTO confers upon Complainant sufficient rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <rockyboot.com>
domain name differs from Complainant’s ROCKY BOOTS mark in the following ways:
(1) the space in-between the words has been removed; (2) the generic top-level
domain “.com” has been added; and (3) the “s” has been omitted from the “boots”
portion of Complainant’s mark. The Panel
aligns itself with prior UDRP precedent, which holds that the removal of spaces
and the addition of a top-level domain is irrelevant under the Policy, in that
spaces are not candidates for inclusion in domain names, and because every
domain name requires a top-level domain.
See, e.g., Hannover Ruckversicherungs-AG v. Ryu, FA
102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical
to HANNOVER RE, “as spaces are impermissible in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); 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.”). Moreover, the Panel notes that the omission
of the “s” from “boots” creates no meaningful distinction. The dominant portion of the mark remains, and
thus the Panel finds that the disputed domain name is confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i). See
Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the
letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change
the overall impression of the mark and thus made the disputed domain name
confusingly similar to it).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). 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); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Respondent’s confusingly similar domain name resolves to a website that displays links to Complainant’s direct competitors within the footwear industry. The Panel infers that Respondent’s benefit from this endeavor is derived from the acquisition and accumulation of referral fees paid for the placement of these advertisements, which are obtained when the rerouted Internet user follows these links. There is no other feature on the resolving website to signal a differing intent by Respondent. Therefore, the Panel finds that Respondent’s “click-through” advertising venture fails as 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent has not filed a response to the Complaint. The record therefore consists of
Complainant’s assertions and evidence submitted before the Panel. Complainant has expressly asserted that
Respondent is not commonly known by the disputed domain name. Within Complainant’s evidence, the WHOIS
information lists Respondent as “Gioacchino
Zerbo.” The Panel, without any contrary
evidence, therefore 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
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the respondent in several other UDRP
proceedings in which the disputed domain names were transferred to the
complainants in those cases. See e.g., Alpitour S.p.A. v. Zerbo, FA 767519
(Nat. Arb. Forum Sept. 22, 2006); see
also
Respondent’s disputed domain name resolves to a website that
displays links for Complainant’s competitors.
There is no need for Respondent to operate in the same industry as
Complainant to be considered a competitor for the purposes of the Policy. See
Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining
“competitor” as “one who acts in opposition to another and the context does not
imply or demand any restricted meaning such as commercial or business
competitor”). It does not take much
imagination to ponder the disruptive potential that this display of competitive
links could or would have on Complainant’s business. As such, the Panel finds that Respondent has
registered and is using the disputed domain name in bad faith under Policy ¶
4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(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); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel finds that Respondent has intended its use of the
confusingly similar disputed domain name to produce commercial gain through the
use of click-through advertising. This
has created a likelihood of confusion as to Complainant’s source and endorsement
of the disputed domain name and resolving website in the eyes of Internet users
seeking Complainant. Therefore, the
Panel finds that Respondent has registered and is using the disputed domain
name in bad faith 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
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <rockyboot.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 2, 2009
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