The North Face Apparel Corp. v. caixiansheng and xiansheng cai
Claim Number: FA1001001302606
Complainant is The North Face Apparel Corp. (“Complainant”), represented by G.
Roxanne Elings of Greenberg Traurig, LLP, New York, USA. Respondent is caixiansheng and xiansheng
cai (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <thenorthfacesupplier.com> and <thenorthfacetrade.com>, registered with Hooyoo Information Technology Co. Ltd.
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 January 12, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitting an “opt-in” form available on the Forum’s website.
After numerous requests, the Registrar, Hooyoo Information Technology Co. Ltd., failed to confirm to the National Arbitration Forum that the <thenorthfacesupplier.com> and <thenorthfacetrade.com> domain names are registered with Hooyoo Information Technology Co. Ltd.or that the Respondent is the current registrant of the names. The Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On February 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2010, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thenorthfacesupplier.com and postmaster@thenorthfacetrade.com. Also on February 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2010, 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <thenorthfacesupplier.com>, and <thenorthfacetrade.com>, are confusingly similar to Complainant’s THE NORTH FACE mark.
2. Respondent has no rights to or legitimate interests in the <thenorthfacesupplier.com> and <thenorthfacetrade.com> domain names.
3. Respondent registered and used the <thenorthfacesupplier.com> and <thenorthfacetrade.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The North Face Apparel Corp., is a world-recognized provider of camping clothing, backpacks and related goods. Complainant owns multiple trademark registrations for THE NORTH FACE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 983,624 issued May 14, 1974).
Respondent registered the disputed domain names on or after December 12, 2009. Respondent’s disputed domain names resolve to websites displaying Complainant’s mark and logo and selling counterfeit goods represented as being of THE NORTH FACE brand.
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.
Complainant owns multiple trademark registrations for THE
NORTH FACE mark with the USPTO (e.g.,
Reg. No. 983,624 issued May 14, 1974).
The Panel finds that these USPTO trademark registrations are sufficient
to prove that Complainant has rights in THE NORTH FACE mark for the purposes of
Policy ¶ 4(a)(i).
See Miller Brewing
Complainant argues that Respondent’s <thenorthfacesupplier.com> and <thenorthfacetrade.com> domain names are confusingly similar to Complainant’s THE NORTH FACE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain names incorporate Complainant’s mark in its entirety, add the generic terms “supplier” or “trade” respectively, and add the generic top-level domain (“gTLD”) “.com.” The Panel finds that addition of a generic or descriptive terms such as “supplier” or “trade” to a registered mark in a disputed domain name creates a confusing similarity between the disputed domain name and the registered mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). The Panel also finds that the addition of a gTLD fails to distinguish a disputed domain name from a registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s THE NORTH FACE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks all rights and legitimate interests in the disputed domain names. When Complainant makes a prima facie case to support its allegations, the burden of proof shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant established a prima facie case and that Respondent has failed to submit a Response in these proceedings. 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Complainant asserts that Respondent is neither commonly
known by the disputed domain names, nor licensed to register a domain name
using the THE NORTH FACE mark. Respondent’s WHOIS
information lacks any defining characteristics relating it to the disputed
domain names. The Panel finds that
without affirmative evidence, that Respondent is commonly known by the disputed
domain names, Respondent lacks all rights and legitimate interests in the
disputed domain names 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 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).
Respondent’s disputed domain names resolve to Respondent’s
websites, which, in addition to featuring Complainant’s THE NORTH FACE mark and
logo, offer for sale counterfeit goods, holding them out to Internet users as
Complainant’s authentic products. The
Panel finds that Respondent’s use of the disputed domain names to sell
counterfeit goods and thereby profit from the use of Complainant’s mark 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 of the disputed domain names pursuant to
Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium
The Panel finds that Respondent is attempting to pass itself
off as Complainant for profit due its use of the Complainant’s mark and logo on
Respondent’s website and its offering of similar goods that claim to be those
made by Complainant. The Panel finds
that Respondent’s efforts to pass itself off as Complainant are further evidence
that Respondent lacks rights and legitimate interests in the disputed domain
names under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v.
Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that
the respondent attempts to pass itself off as the complainant online, which is
blatant unauthorized use of the complainant’s mark and is evidence that the
respondent has no rights or legitimate interests in the disputed domain name);
see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007)
(“Because [the] respondent in this case is also attempting to pass itself off
as [the] complainant, presumably for financial gain, the Panel finds the respondent
is not using the <mortgageresearchcenter.org> domain name for 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).”).
The Panel finds that
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s use of Complainant’s mark in the disputed
domain names is an effort to disrupt Complainant’s business by redirecting
Complainant’s customers, who seek Complainant’s site, to Respondent’s
site. When the Internet users arrive at
Respondent’s website, they are likely to be confused as to the affiliation of
Respondent’s websites since they display Complainant’s mark and logo and offer
products that appear to be Complainant’s products. This confusion is likely to result in lost
business for Complainant. The Panel
finds that Respondent’s activities on its websites and its use of the disputed
domain names are calculated to and likely to disrupt Complainant’s business and
demonstrate bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v.
Aston, FA 593977 (Nat. Arb. Forum
Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert
Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”);
see also Lambros
v. Brown, FA 198963 (Nat. Arb. Forum Nov.
19, 2003) (finding that the respondent registered a domain name primarily to
disrupt its competitor when it sold similar goods as those offered by the
complainant and “even included Complainant's personal name on the website,
leaving Internet users with the assumption that it was Complainant's business
they were doing business with”).
Complainant alleges that Respondent is using the disputed domain names to offer counterfeit versions of Complainant’s goods. The Panel finds that Respondent’s activities in selling counterfeit goods is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
Lastly, Complainant contends that Respondent is using the disputed domain names to pass itself off as being associated with Complainant by displaying Complainant’s THE NORTH FACE mark and logo on the resolving websites. The Panel finds that this use also supports findings of bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
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 <thenorthfacesupplier.com> and <thenorthfacetrade.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 16, 2010
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