Mason Companies, Inc. v. Andre Breuer
Claim Number: FA1001001303605
Complainant is Mason Companies, Inc. (“Complainant”), represented by William
D. Schultz, of Merchant & Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <athleticshoesmall.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 19, 2010.
On January 19, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <athleticshoesmall.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 25, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 16, 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@athleticshoesmall.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <athleticshoesmall.com> domain name is confusingly similar to Complainant’s SHOEMALL.COM mark.
2. Respondent does not have any rights or legitimate interests in the <athleticshoesmall.com> domain name.
3. Respondent registered and used the <athleticshoesmall.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mason Companies, Inc., is an international online and retail shoe distributor. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SHOE MALL mark (e.g., Reg. No. 3,021,263 issued November 29, 2005) and the SHOEMALL.COM mark (e.g., Reg. No. 3,299,876 issued on September 25, 2007), as well as registrations in with the Office for Harmonization in the Internal Market (“OHIM”) for the SHOE MALL mark (e.g., Reg. No. 858,803 issued on December 22, 1999).
Respondent registered the <athleticshoesmall.com> domain name on July 29, 2009. Respondent’s disputed domain name resolves to a website displaying third-party links to websites offering shoes and related items in competition with Complainant.
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.
The Panel finds that Complainant has established rights in the SHOE MALL and SHOEMALL.COM marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and the OHIM. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Respondent’s domain name <athleticshoesmall.com> is confusingly similar to the SHOEMALL.COM mark because it encompasses the SHOEMALL.COM mark in its entirety and merely adds the descriptive term ‘athletic,’ which actually describes a product that Complainant sells. By adding the letter ‘s’ to the word “shoe,” Respondent has not created a distinction between Complainant’s registered mark and the disputed domain name pursuant to Policy ¶ 4(a)(i). The Panel finds that a disputed domain name that adds a descriptive term to a registered trademark does not distinguish the disputed domain name from the trademark of Complainant for purposes of Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel further finds that adding the letter ‘s’ to Complainant’s registered trademark does not distinguish the disputed domain name from the trademark. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the panel finds that the disputed domain name is confusingly similar to Complainant’s SHOEMALL.COM mark for purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name. 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 Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). Nonetheless, the Panel will examine the record against the requirements of the Policy.
Complainant contends that Respondent is not using the
disputed domain name in connection with a bona
fide offering of goods or services, nor is Respondent making a
noncommercial or fair use of the disputed domain name. Respondent is using the disputed domain name
to resolve to a website that offers click-through links and advertisements for
Complainant’s shoe and related wear competitors for commercial gain. The Panel finds that Respondent’s use of the
disputed domain name to divert 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 DLJ Long Term
Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002)
(“Respondent is not using the disputed domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain name
to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”); see
also Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the
respondent was not using the domain names for a bona fide offering of
goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
Complainant further contends that Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain name identifies Respondent as “Andre Breuer,” and there is no further evidence on record showing that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name pursuant 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name for purposes of Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant contends that upon contacting Respondent and
offering to pay $75.00 to Respondent for transferring the disputed domain name
that Respondent declined that offer and responded with a $5,000 sale
price. The Panel finds that Respondent’s
offer for sale, although initiated by Complainant, is in excess of the costs
associated with acquiring the domain name and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See
Marrow v. iceT.com, D2000-1234
(WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the
fact that it was the Complainant who contacted Respondent to see if it was
interested in selling the domain name”); see
also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000)
(finding bad faith where the respondent offered to sell the Domain Name to the
complainant for $10,000 when the respondent was contacted by the complainant).
Respondent registered and is using the disputed domain name
to divert Internet users seeking Complainant’s shoe products to websites of its
competitors, thereby disrupting the business of Complainant, evidence that
Respondent registered and is using the disputed domain name in bad faith for
purposes of Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock
Indus., Ltd., FA 724554 (Nat. Arb. Forum
Aug. 1, 2006) (finding that the respondent registered and used the
<classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶
4(b)(iii) by redirecting Internet users to the respondent’s competing website);
see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)).
Respondent registered and is using the disputed domain name in bad faith by attracting Internet users to its website for commercial gain by creating a likelihood of confusion between Complainant’s SHOEMALL.COM mark and the disputed domain name. Presumably, Respondent receives click-through fees for the links displayed on its website, which is further evidence of bad faith under Policy ¶ 4(a)(iii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
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 <athleticshoesmall.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 10, 2010
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