Brown Shoe Company, Inc. and Brown Group Retail, Inc. v. Marketing Express c/o Domain Administrator
Claim Number: FA0907001273208
Complainant is Brown
Shoe Company, Inc. and Brown Group
Retail, Inc. (“Complainant”), represented by Michelle Alvey, of Husch Blackwell Sanders LLP, Missouri,
USA. Respondent is Marketing Express c/o Domain
Administrator (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <famousfootware.com>, registered with Rebel.com.
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 July 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 13, 2009.
On July 17, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <famousfootware.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 July 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 17, 2009 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@famousfootware.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 26, 2009, 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 <famousfootware.com> domain name is confusingly similar to Complainant’s FAMOUS FOOTWEAR mark.
2. Respondent does not have any rights or legitimate interests in the <famousfootware.com> domain name.
3. Respondent registered and used the <famousfootware.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Brown Shoe Company, Inc. and Brown Group
Retail, Inc., operates in the retail footwear
business. Complainant has registered its
FAMOUS FOOTWEAR mark with the Canadian
Intellectual Property Office (“CIPO”) (Reg. No. TMA633,563
issued February 23, 2005). Complainant
has made continuous use of this mark in the
Respondent registered the <famousfootware.com> domain name on June 2, 2001. The disputed domain name resolves to a “link farm,” wherein footwear advertisements and links to Complainant’s direct competitors are displayed, along with a pop-up advertisement. The resolving website also attempts to distribute malware or other malicious software to Internet users that reach the disputed domain name.
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.
Identical and/or
Confusingly Similar
Complainant asserts
its rights in the FAMOUS FOOTWEAR mark through its registration of the mark
with the CIPO (Reg. No. TMA633,563 issued February 23,
2005). The Panel finds that Complainant
has rights in the mark through this registration, and that it is irrelevant
that such registration occurred in a country other than of Respondent’s
residence under Policy ¶ 4(a)(i). See Miller
Brewing
Complainant also contends that it has common law rights in
the FAMOUS FOOTWEAR mark through its continuous use in the
Complainant contends
that the <famousfootware.com> domain name is confusingly similar
to its FAMOUS FOOTWEAR mark, despite the addition of the generic top-level
domain “.com” and the replacement of the mark element “FOOTWEAR” with the
allegedly phonetically identical word “footware.” Based on prior UDRP precedent, the Panel
finds that these distinctions are not sufficiently meritorious, and that
therefore the disputed domain name is confusingly similar to the mark under
Policy ¶ 4(a)(i).
See Jerry
Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Rights and
Legitimate Interests
Complainant must first make a prima facie case that
Respondent lacks rights and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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
interests in the subject domain names.”).
Complainant
contends that Respondent is not commonly known by the disputed domain name, and
that Respondent has no legitimate claim to the use of the FAMOUS FOOTWEAR mark
in any form. The Panel notes that the
WHOIS information lists Respondent as “Marketing Express c/o Domain
Administrator.” Thus, the Panel finds
that Respondent is not commonly known
by the disputed domain name pursuant to 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
Complainant further contends that Respondent’s disputed domain name
resolves to a “link farm,” wherein footwear advertisements and links to
Complainant’s direct competitors are displayed, along with a pop-up
advertisement. Complainant further argues that Respondent’s disputed
domain name attempts to distribute malware or other malicious software to
Internet users that are redirected to the resolving website. Complainant has submitted screenshot evidence
indicating that such an activity is taking place. The
Panel agrees with Complainant’s assertion that Respondent collects referral
fees or other commercial gain from these activities, and therefore finds that
Respondent has not created 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 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)); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user); see also Dell Inc. v. Versata Software, Inc., FA 1246916, (Nat. Arb. Forum
Apr. 10, 2009) (finding that the respondent was using the disputed domain name
to resolve to a website that attempted to download malware onto Internet users’
computers, which was not 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)).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and
Use in Bad Faith
Complainant contends that the provision of third-party links
and advertisements for competitive footwear on the resolving website
demonstrates Respondent’s intentional disruption of Complainant’s
business. The Panel finds that such disruption
was intentional and therefore finds that Respondent has engaged in bad faith
registration and use under Policy ¶ 4(b)(iii). See
Moreover, Complainant alleges that Respondent has
intentionally created a likelihood of confusion as to Complainant’s affiliation
with, and endorsement of, the disputed domain name and resolving website for
commercial gain. Complainant contends
that this commercial gain is achieved through the receipt of commercial fees in
the competitive links and the pop-up advertisement. Complainant argues that the distribution of
malware from the disputed domain name evidences ultimate commercial gain via some
nefarious means. The Panel finds that
Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See
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 <famousfootware.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: August 30, 2009
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