national arbitration forum

 

DECISION

 

Brown Shoe Company, Inc. and Brown Group Retail, Inc. v. Marketing Express c/o Domain Administrator

Claim Number: FA0907001273208

 

PARTIES

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”), Cayman Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <famousfootware.com>, registered with Rebel.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

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 United States since as early as 1961.  Complainant operates over 1,000 retail stores under the mark, and has achieved net sales totaling $7.9 billion during 2003-2008. 

 

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. 

 

DISCUSSION

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 Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant also contends that it has common law rights in the FAMOUS FOOTWEAR mark through its continuous use in the United States since as early as 1961.  Complainant alleges that it has used the mark in connection with its retail services for footwear, backpacks, socks, and other goods.  Complainant asserts that it operates over 1,000 retail stores under the mark, and that its net sales totaled $7.9 billion during 2003-2008.  The Panel finds that Complainant has established sufficient secondary meaning in the FAMOUS FOOTWEAR mark to engender common law rights in the mark dating back to 1961.  See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).

 

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. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”).

 

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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).

 

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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Dell Inc. v. Versata Software, Inc., FA 1246916, (Nat. Arb. Forum Apr. 10, 2009) (finding that the respondent’s use of the disputed domain name to introduce malware onto Internet users’ computers is presumably an attempt by the respondent to profit from the confusingly similar disputed domain name through the receipt of fees for engaging in this behavior or the use of information gained from the malware software to obtain some form of revenue and is thus evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name to “divert Internet users to a website that uses tactics that may be harmful to users’ computers” is evidence of bad faith registration and use.).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

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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