Mason Companies, Inc. v. chen ming shan
Claim Number: FA1004001320715
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 <e-shoemall.com>, registered with Xiamen Chinasource Internet Service Co., Ltd.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2010. The Complaint was submitted in both Chinese and English.
On April 22, 2010, Xiamen Chinasource Internet Service Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <e-shoemall.com> domain name is registered with Xiamen Chinasource Internet Service Co., Ltd. and that Respondent is the current registrant of the name. Xiamen Chinasource Internet Service Co., Ltd. has verified that Respondent is bound by the Xiamen Chinasource Internet Service Co., Ltd. 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 April 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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 email@example.com. Also on April 27, 2010, the Chinese language 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 May 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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" 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <e-shoemall.com> domain name is confusingly similar to Complainant’s SHOEMALL.COM mark.
2. Respondent does not have any rights or legitimate interests in the <e-shoemall.com> domain name.
3. Respondent registered and used the <e-shoemall.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mason Companies, Inc., does business in online retail services in the footwear industry. Complainant owns a trademark registration for the SHOEMALL.COM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,299,876 issued Sept. 25, 2007).
Respondent, chen ming shan, registered the <e-shoemall.com> domain name on April 1, 2010. The disputed domain name redirects to a website offering products and advertisements 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.
Complainant owns a USPTO trademark registration for the
SHOEMALL.COM mark (e.g., Reg. No.
3,299,876 issued Sept. 25, 2007). The
Panel holds such federal trademark registrations to be conclusive evidence of
Complainant’s rights in the SHOEMALL.COM mark according to Policy ¶ 4(a)(i), regardless of where the Respondent resides or
operates. See Reebok
Int’l Ltd. v.
Complainant contends that Respondent’s <e-shoemall.com> disputed domain name is confusingly similar to Complainant’s SHOEMALL.COM mark because the only difference between the two is the addition of the letter “e” and a hyphen preceding Complainant’s mark. The Panel finds that such minor modifications do not affect the disputed domain name’s confusing similarity to Complainant’s mark. See Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and a hyphen does not affect the power of the mark in determining confusing similarity); see also Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks). Therefore, the Panel determines that Respondent’s <e-shoemall.com> disputed domain name is confusingly similar to Complainant’s SHOEMALL.COM mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name and accompanies such allegation with sufficient evidence to establish the prima facie case required by Policy ¶ 4(a)(ii). Subsequently, Respondent now bears the burden to demonstrate that it does possess rights and legitimate interests in the disputed domain name. Since Respondent has failed to respond to the Complaint, the Panel may find Complainant’s allegations to be true and hold that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also 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). In an effort to make a complete determination on the issue of Respondent’s rights and legitimate interests, however, the Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors.
Complainant argues that Respondent is neither commonly known
by the disputed domain name nor has been granted permission to use
Complainant’s mark in the disputed domain name.
Since the WHOIS information for the disputed domain name lists the
registrant as “chen ming shan” instead of a name corresponding with the
disputed domain name, the Panel finds that Respondent is not commonly known by
the disputed domain name, which supports a finding that Respondent does not
have rights and legitimate interests in the disputed domain name. 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
Complainant asserts that Respondent’s <e-shoemall.com> disputed domain name resolves to a website featuring advertisements and products in competition with Complainant. The Panel finds that using the disputed domain name in connection with a website competing with Complainant by diverting Internet users and offering similar products is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s disputed domain name redirects Internet users seeking Complainant to a competing website. Internet users arriving at Respondent’s resolving webpage may choose to buy products offered by Complainant from Respondent’s site instead, which is business lost to Complainant. The Panel finds Respondent’s operation of a competing website associated with the disputed domain name disrupts Complainant’s business and reveals bad faith registration and use under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent’s disputed domain name intentionally appropriates Complainant’s SHOEMALL.COM mark in order to commercially benefit from Complainant’s fame and recognition as the disputed domain name will likely attract Complainant’s intending customers to Respondent’s resolving website. The Panel finds Respondent’s attempts to create confusion among Internet users for Respondent’s own commercial gain demonstrates bad faith registration and use according to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); 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).”).
The Panel finds 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 <e-shoemall.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 8, 2010
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