national arbitration forum

 

DECISION

 

The North Face Apparel Corp. v. Ian

Claim Number: FA1001001302728

 

PARTIES

 

Complainant is The North Face Apparel Corp. (“Complainant”), represented by G. Roxanne Elings, of Greenberg Traurig LLP, New York, USA.  Respondent is Ian (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <northfacesupply.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns.com.cn.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on 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.

 

On January 13, 2010, Beijing Innovative Linkage Technology Ltd. d/b/a Dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <northfacesupply.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns.com.cn and that Respondent is the current registrant of the name.  Beijing Innovative Linkage Technology Ltd. d/b/a Dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a Dns.com.cn 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 January 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@northfacesupply.com.  Also on January 26, 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, 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 February 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 (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.

 

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 <northfacesupply.com> domain name is confusingly similar to Complainant’s THE NORTH FACE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <northfacesupply.com> domain name.

 

3.      Respondent registered and used the <northfacesupply.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, The North Face Apparel Corp., is a 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, Ian, registered the disputed domain name <northfacesupply.com> on January 8, 2010.  Respondent’s disputed domain name resolves to a website displaying Complainant’s mark and logo and selling counterfeit goods represented as being of THE NORTH FACE brand.

 

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 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 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 Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

Complainant argues that Respondent’s disputed domain is confusingly similar to Complainant’s THE NORTH FACE mark pursuant to Policy ¶ 4(a)(i).  Respondent’s disputed domain name <northfacesupply.com> incorporates the key and essential terms of Complainant’s mark, distinguishing the disputed domain name from Complainant’s mark only by deleting the article “the” and the spaces between the words, adding the generic term “supply,” and affixing the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the deletion of the article “the” from Complainant’s mark is a minor variation that is inadequate to distinguish the disputed domain name from the Complainant’s mark.  See Mega Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the <megasociety.net> and <megasociety.com> domain names were identical or confusingly similar to Complainant's THE MEGA SOCIETY mark); see also Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the definite article “the” and the preposition “of” from the complainant’s mark and thus, failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”).

 

The addition of the generic term “supply” to Complainant’s mark also fails to differentiate the disputed domain name from Complainant’s mark.  See American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); 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 deletion of the spaces between the words and the addition of the gTLD “.com” are irrelevant to a Policy ¶ 4(a)(i) analysis, failing to eliminate confusion between the disputed domain name <northfacesupply.com> and Complainant’s THE NORTH FACE mark.  See American  Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

 

Therefore, the Panel finds the disputed domain name <northfacesupply.com> is confusingly similar to Complainant’s THE NORTH FACE mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name.  Pursuant to Policy ¶ 4(c), Complainant must first put forth a prima facie case before the burden subsequently shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name.  The Panel finds that Complainant’s initial evidence has sufficiently established a prima facie case in these proceedings.  Because Respondent has failed to respond to Complainant’s allegations against Respondent, the Panel may make any adverse inferences warranted by Complainant’s allegations and assume that Respondent’s silence is an admission that Respondent lacks rights and legitimate interests.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).  The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights or legitimate interests.

 

Complainant contends that Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use Complainant’s mark in the disputed domain name.  In support of this assertion, Complainant offers evidence that shows that the WHOIS information for the disputed domain lists the registrant as “Ian,” not as “north face supply” or any variation incorporating the words “north face.”  The Panel finds that this failure of the WHOIS information to identify the registrant as the disputed domain name is evidence that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Respondent’s disputed domain name resolves to Respondent’s website, which, in addition to featuring Complainant’s THE NORTH FACE mark and logo, offers 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 name 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) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit 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 under Policy ¶ 4(c)(iii).”).

 

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.  Respondent’s efforts to pass itself off as Complainant are additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See American 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 is evidence that the respondent has no rights or legitimate interests in the disputed domain name).  Such “passing off,” the Panel finds, is inconsistent with a bona fide offering of goods or services under Policy ¶ 4(c)(i)  or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See 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 Policy ¶ 4(a)(ii) has been satisfied.   

 

Registration and Use in Bad Faith

 

Respondent’s use of Complainant’s mark in the disputed domain name is an effort to disrupt Complainant’s business by redirecting Complainant’s unknowing customers to Respondent’s site instead of Complainant’s.  When the Internet users arrive at Respondent’s website, they are likely to be confused as to the affiliation of Respondent’s website because it displays Complainant’s mark and logo and offers products that appear to be Complainant’s products.  This confusion is likely to result in lost business for Complainant.  The Panel finds Respondent’s activities on its website and its use of the disputed domain name to disrupt Complainant’s business 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”).

 

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

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <northfacesupply.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  March 17, 2010

 

 

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