Vans, Inc. v. Azeras LLC
Claim Number: FA0912001298528
Complainant is Vans, Inc. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vanstriplecrownofsurfing.com>, registered with Go Montenegro Domains, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2010 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@vanstriplecrownofsurfing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <vanstriplecrownofsurfing.com> domain name is confusingly similar to Complainant’s VANS TRIPLE CROWN EDITION mark.
2. Respondent does not have any rights or legitimate interests in the <vanstriplecrownofsurfing.com> domain name.
3. Respondent registered and used the <vanstriplecrownofsurfing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vans, Inc., is a
leading action sports lifestyle company who specializes in manufacturing and
marketing products designed for action sports such as skating, skateboarding,
surfing and motor biking. In addition to
producing action sports products, Complainant also organizes major action
sporting events such as the “Vans Warped Tour” and the “Vans Triple Crown of
Surfing.” Complainant owns a trademark
registration for the VANS TRIPLE CROWN EDITION mark with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 2,887,568 issued
Respondent registered the <vanstriplecrownofsurfing.com> domain name on
Complainant
offers evidence that Respondent has a history of registering domain names
infringing upon the trademark rights of others and has been ordered by previous
UDRP panels to transfer the disputed domain names to the respective
complainants. See Carrefour v. Azeras LLC, D2008-1998 (WIPO
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.
Respondent registered the <vanstriplecrownofsurfing.com> domain name on
Complainant argues that Respondent’s <vanstriplecrownofsurfing.com> domain name is confusingly
similar to Complainant’s VANS TRIPLE CROWN EDITION mark pursuant to Policy ¶
4(a)(i). Respondent’s disputed domain
name contains Complainant’s mark without the descriptive term “edition,” adds
the terms “of” and “surfing,” omits spacing between the terms, and adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that the omission of the descriptive term “edition” in
the disputed domain name fails to create a defining characteristic needed to
escape confusing similarity. See Am. Eagle
Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks all rights and legitimate interests in the disputed domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that its rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case and Respondent has failed to submit a Response in this proceeding. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant asserts that Respondent is neither commonly
known by the disputed domain name, nor licensed to register a domain name using
the VANS TRIPLE CROWN EDITION mark. Respondent’s WHOIS
information identifies the registrant as “Azeras LLC” and therefore lacks any
defining characteristics relating it to the disputed domain name. The Panel finds that without affirmative
evidence Respondent is commonly known by the disputed domain name,
Respondent lacks all rights and legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See 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); see also
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Respondent’s disputed
domain name resolves to a website featuring click-through links and
advertisements for Complainant’s competitors in the surf swear industry. The
Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s
competitors, presumably for financial gain, does not constitute 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 Expedia, Inc. v.
Compaid, FA 520654
(Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of
the <expediate.com> domain name to redirect Internet users to a website
featuring links to travel services that competed with the complainant was not 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 Metro.
Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar
domain name to divert Internet users to competing websites does not represent 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.
Complainant provides evidence that Respondent has a history
of registering domain names infringing upon the trademark rights of others, and
has been ordered by previous UDRP panels to transfer the disputed domain names
to the respective complainants. See Carrefour v. Azeras LLC, D2008-1998 (WIPO
The Panel finds that Respondent intended to disrupt
Complainant’s business and take advantage of Complainant’s goodwill surrounding
its mark by displaying third-party links to Complainant’s competitors in the
surf wear industry. The Panel therefore
finds that Respondent engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).
See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”); see also
Respondent has created a likelihood of confusion for
commercial gain as to Complainant’s source and affiliation with the disputed domain name
and the resolving website. Respondent is
presumably monetarily benefiting through the receipt of referral fees accrued
when Internet users click on the competitive links. This constitutes evidence that Respondent has
registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Asbury Auto. Group,
Inc. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vanstriplecrownofsurfing.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 28, 2010
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