national arbitration forum

 

DECISION

 

John Rich & Sons Investment Holding Company v. xmyilong company / davis  lin

Claim Number: FA1101001367632

 

PARTIES

Complainant is John Rich & Sons Investment Holding Company (“Complainant”), represented by Jeffrey S. Habib of Hooker & Habib, P.C., Pennsylvania, USA.  Respondent is xmyilong company / davis  lin (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <woolrich-arcticparka.com>, registered with Name.com LLC.

 

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2011; the National Arbitration Forum received payment on January 14, 2011.

 

On January 14, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <woolrich-arcticparka.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name.  Name.com LLC has verified that Respondent is bound by the Name.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2011 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@woolrich-arcticparka.com.  Also on January 17, 2011, 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 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

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 <woolrich-arcticparka.com> domain name is confusingly similar to Complainant’s WOOLRICH mark.

 

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

 

3.    Respondent registered and used the <woolrich-arcticparka.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, John Rich & Sons Investment Holding Company, owns and operates its clothing, footwear, headgear and retail clothing stores under the WOOLRICH mark.  Complainant owns several trademark registrations worldwide for the WOOLRICH mark, including those with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,256,425 issued November 1, 1983) and the Chinese State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 1246831 issued February 14, 1999). 

 

Respondent, xmyilong company / davis  lin, registered the <woolrich-arcticparka.com> domain name on October 25, 2010.  Respondent’s disputed domain name resolves to a website that markets and sell counterfeit versions of Complainant’s products without authorization or license from Complainant to do so.

 

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 has presented evidence that it owns several trademark registrations with various governmental trademark authorities worldwide.  Two of those registrations are with the USPTO (e.g., Reg. No. 1,256,425 issued November 1, 1983) and the SIPO (e.g., Reg. No. 1246831 issued February 14, 1999).  The Panel finds that such evidence establishes Complainant’s rights in its WOOLRICH mark under 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 Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).

 

Complainant argues that the <woolrich-arcticparka.com> domain name is confusingly similar to its WOOLRICH mark under the Policy.  Complainant notes that the disputed domain name contains its entire mark with the addition of a hyphen and the descriptive terms “arctic” and “parka,” as well as the generic top-level domain (“gTLD”) “.com.”  The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i), where the domain name contains Complainant’s entire mark while merely adding the gTLD “.com,” a hyphen, and two terms that describe a large part of Complainant’s outdoor clothing business.  See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also 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.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <woolrich-arcticparka.com> domain name.  Complainant is required to make a prima facie case in support of these allegations under Policy ¶ 4(a)(ii).  Once the Complainant has produced a prima facie case the burden shifts to Respondent to show it has rights or legitimate interests in the disputed domain name.  See 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.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).  The Panel finds that Complainant has established a prima facie case.  Due to the 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. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  Nonetheless, the Panel will continue to evaluate the evidence on record to determine whether Respondent has rights and legitimate interests in the <woolrich-arcticparka.com> domain name under Policy ¶ 4(c).

 

Complainant asserts that Respondent is not commonly known by the <woolrich-arcticparka.com> domain name.  Complainant alleges that Respondent is not authorized or licensed to use Complainant’s WOOLRICH mark.  The WHOIS information identifies the domain name registrant as “xmyilong company / davis  lin,” which Complainant contends is not similar to Respondent’s <woolrich-arcticparka.com> domain name.  Respondent has failed to respond to these allegations and has failed to present evidence that would suggest that Respondent is commonly known by the disputed domain name.  The Panel concludes that Respondent is not commonly known by the <woolrich-arcticparka.com> domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant contends that Respondent’s website resolving from the disputed domain name is an exact copy of Complainant’s previous, official website located at <woolrich.com.>.  Complainant notes that the logos, trademarks and clothing products advertised on Respondent’s website contain all of the same images of Complainant’s previous websites, and that Respondent is selling unauthorized or counterfeit versions of Complainant’s goods.  Complainant argues that such use of the confusingly similar domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.  The Panel agrees and finds that Respondent’s use of the <woolrich-arcticparka.com> domain name to produce, market and sell unauthorized and counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also 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).”).

 

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

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent is using the disputed domain name to sell counterfeit or otherwise unauthorized versions of Complainant’s products.  The Panel finds that Respondent’s diversion of Internet users who are looking for Complainant’s products, to Respondent’s website where Respondent sells counterfeit versions of Complainant’s products is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii).  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

 

The Panel further finds that Respondent is attempting to attract Internet users to its website for commercial gain, by using Complainant’s mark in its domain name to confuse consumers into believing that Respondent is either licensed to sell Complainant’s products or that it is Complainant’s website.  Therefore, the Panel finds that Respondent’s use of the domain name also violates Policy ¶ 4(b)(iv), and is further evidence of Respondent’s bad faith registration and use.  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also 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).”).

 

The Panel finds that 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 <woolrich-arcticparka.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  February 24, 2011

 

 

 

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