national arbitration forum

 

DECISION

 

Crocs, Inc. v. crocs home

Claim Number: FA1102001371098

 

PARTIES

Complainant is Crocs, Inc. (“Complainant”), represented by Jennifer Daniel Collins of Faegre & Benson LLP, Colorado, USA.  Respondent is crocs home (“Respondent”), Tunisia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <crocsbuy.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2011; the National Arbitration Forum received payment on February 4, 2011.

 

On February 3, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <crocsbuy.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 February 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 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@crocsbuy.com.  Also on February 4, 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 March 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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, 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 <crocsbuy.com> domain name is confusingly similar to Complainant’s CROCS mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Crocs, Inc., markets and distributes shoes, apparel, and other goods through over 6,500 store locations in over 125 countries worldwide, as well as in kiosks in shopping malls around the country. Complainant owns numerous trademark registrations for the CROCS mark with the trademark authorities of countries around the world, including the Canadian Intellectual Property Office (“CIPO”), the European Union Office for Harmonization in the Internal Market (“OHIM”), and the United Kingdom Intellectual Property Office (“UKIPO”), among many others:

CIPO

Reg. No. TMA675,686        issued October 26, 2006;

Reg. No. TMA754,961        issued December 10, 2009;

 

OHIM

Reg. No. 003455383           issued April 22, 2005;

Reg. No. 885,028                 issued April 11, 2006;

Reg. No. 971,105                 issued November 29, 2007; and

 

UKIPO

Reg. No. 2,443,337              issued February 15, 2008.

 

Respondent, crocs home, registered the <crocsbuy.com> domain name on March 26, 2010. The disputed domain name resolves to Respondent’s commercial website that sells shoes bearing the CROCS mark using Complainant’s logo and copyrighted images.

 

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 numerous trademark registrations for the CROCS mark with the trademark authorities of countries around the world, including the CIPO, the OHIM, and the UKIPO, among many others:

 

CIPO

Reg. No. TMA675,686        issued October 26, 2006;

Reg. No. TMA754,961        issued December 10, 2009;

 

OHIM

Reg. No. 003455383           issued April 22, 2005;

Reg. No. 885,028                 issued April 11, 2006;

Reg. No. 971,105                 issued November 29, 2007; and

 

UKIPO

Reg. No. 2,443,337              issued February 15, 2008.

The Panel finds that these trademark registrations around the world demonstrate that Complainant has established rights in the CROCS mark pursuant to Policy    ¶ 4(a)(i), even though the mark is not registered in the country of Respondent’s residence or business operations. See 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)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant alleges that Respondent’s <crocsbuy.com> domain name is confusingly similar to Complainant’s CROCS mark because the disputed domain name is comprised of Complainant’s complete mark and two additional elements: the generic term “buy” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a generic term like “buy” to Complainant’s mark does not dispel confusing similarity according to Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). The Panel also finds that attaching a gTLD has no effect on a confusingly similar analysis. See 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). The Panel accordingly concludes that Respondent’s <crocsbuy.com> domain name is confusingly similar to Complainant’s CROCS mark for the purposes of Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not possess rights and legitimate interests in the disputed domain name. The requirements of Policy ¶ 4(a)(ii) dictate that Complainant must put forth a prima facie case against Respondent before the burden to show rights and legitimate interests shifts to Respondent. The evidence presented by Complainant in the Complaint has sufficiently satisfied this obligation. In defaulting, however, Respondent has not presented a Response and has failed to answer any of Complainant’s allegations. The Panel infers that Respondent therefore does not have rights and legitimate interests in the <crocsbuy.com> domain name and that Complainant’s allegations may be taken as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); 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). The Panel will consider the evidence in the record, however, in light of the Policy       ¶ 4(c) factors to make an independent determination on Respondent’s rights and legitimate interests.

 

Complainant asserts that Respondent has no trademark or intellectual property rights in the <crocsbuy.com> domain name and that Respondent has never been a licensee of Complainant. Although the WHOIS information for the disputed domain name lists the registrant as “crocs home,” Complainant argues that this fact, without other corroborating evidence, is insufficient to show that Respondent is commonly known by the disputed domain name. The Panel consequently finds that Respondent is not commonly known by the <crocsbuy.com> domain name and  lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c)(ii).  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).

 

Complainant alleges that Respondent’s <crocsbuy.com> domain name resolves to Respondent’s commercial website that sells shoes bearing the CROCS mark. Complainant argues that in addition to using Complainant’s mark in the disputed domain name, Respondent also uses Complainant’s logo and product images on the resolving website to confuse consumers looking for Complainant’s Chinese website and attempt to pass itself off as Complainant. The Panel finds that Respondent’s efforts to pass itself off as Complainant for the purpose of selling without authorization goods purporting to be Complainant’s is not consistent with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under 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 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).

 

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

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent’s website resolving from its <crocsbuy.com> domain name is a commercial website operating without authorization to sell products bearing the CROCS mark. As this puts both Complainant and Respondent in the position of a seller of Complainant’s products, Respondent’s use of the disputed domain name is competitive with Complainant and disrupts Complainant’s business. The Panel finds these actions indicate Respondent’s 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 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). 

 

Complainant alleges that Respondent intentionally registered the CROCS mark as part of the <crocsbuy.com> domain name in order to attract Internet users seeking Complainant’s products and capitalize on Complainant’s goodwill. Complainant asserts that the use of the CROCS mark in the disputed domain name, combined with Respondent’s display of Complainant’s logo and product images on the resolving website, creates a likelihood of confusion as to the source, sponsorship or affiliation of Respondent’s website. Because Respondent’s resolving website is a commercial site offering goods, this attraction and confusion translate into profit for Respondent when misled consumers purchase products from Respondent. The Panel finds that Respondent’s intentions to use Complainant’s mark to attract consumers, create confusion and increase profit show bad faith registration and use according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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).

 

Complainant further contends that Respondent is using the <crocsbuy.com> domain name in an effort to pass itself off as Complainant by prominently displaying the CROCS mark along with Complainant’s logo and product images. The Panel concludes that these efforts to pass itself off as Complainant show Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).  

 

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 <crocsbuy.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  March 11, 2011

 

 

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