Seychelles Imports, LLC v. Wuhu Best Corporation Footwear Industry Co., Ltd. / Wang Zaiwu
Claim Number: FA1103001379751
Complainant is Seychelles Imports, LLC (“Complainant”), represented by Howard H. Weller of Mitchell Silberberg & Knupp LLP, New York, USA. Respondent is Wuhu Best Cooperation Footwear Industry Co., Ltd / Wang Zaiwu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bcfootwear.com>, registered with Xin Net Technology Corporation.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2011; the National Arbitration Forum received payment on March 24, 2011. The Complaint was received in both Chinese and English.
On March 24, 2011, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <bcfootwear.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 April 1, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 21, 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@bcfootwear.com. Also on April 1, 2011, 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 April 26, 2011, 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 (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.
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 <bcfootwear.com> domain name is identical to Complainant’s BC FOOTWEAR mark.
2. Respondent does not have any rights or legitimate interests in the <bcfootwear.com> domain name.
3. Respondent registered and used the <bcfootwear.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seychelles Imports, LLC, is an international manufacturer and wholesaler of footwear for men, women, and children. Complainant owns the BC FOOTWEAR mark and has used the name in connection with its footwear since April 11, 2001. Complainant also holds a trademark registration for its BC FOOTWEAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,004,155 filed July 12, 2004 issued Oct. 4, 2005).
Respondent, Wuhu Best Corporation Footwear Industry Co., Ltd. / Wang Zaiwu, registered the <bcfootwear.com> domain name on October 11, 2001. The disputed domain name previously resolved to the Registrar’s website and to a page displaying highlights from a video game unrelated to Complainant. The domain name currently resolves to an inactive site.
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 its rights in the BC FOOTWEAR mark by registering that mark with a federal trademark authority, the USPTO. Moreover, registration of a mark in Respondent’s country of residence is immaterial to a determination of Complainant’s rights. (e.g., Reg. No. 3,004,155 filed July 12, 2004 issued October 4, 2005). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant also asserts common law rights in its BC FOOTWEAR mark. Complainant has commercially manufactured and sold footwear under the BC FOOTWEAR mark since April 11, 2001. Since that time, Complainant has sold over 4 million pairs of shoes, in over 15 countries, under the BC FOOTWEAR name and has developed international goodwill in its mark. Furthermore, Complainant has undergone extensive marketing and promotion of its goods in relation to the mark prior to the registration of the disputed domain name. Finally, Complainant has sold shoes for over 30 years and the timing of Respondent’s registration of the disputed domain name indicates an opportunistic action by the Respondent related to Complainant’s new brand expansion. The Panel finds that the BC FOOTWEAR mark has developed sufficient secondary meaning through Complainant’s continuous use, extensive marketing, sales, and promotion of its products under the mark since 2001. Therefore, the Panel finds that Complainant has established common law rights in the mark under Policy ¶ 4(a)(i). See Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Complainant argues that Respondent’s <bcfootwear.com> domain name is identical to its BC FOOTWEAR mark. The disputed domain name incorporates the entire mark and makes no changes except to delete the space between the words of the mark and add the generic top-level domain (“gTLD”) “.com.” The Panel finds that deleting a space does not preclude a finding that the domain name is identical to Complainant’s mark. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). The Panel also finds that the addition of a gTLD does not affect the analysis of whether the disputed domain name is identical to Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel concludes that Respondent’s <bcfootwear.com> domain name is identical to Complainant’s BC FOOTWEAR mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel determined 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. Here, Complainant has made a prima facie showing in support of its claims. Given Respondent’s failure to submit a response to the Complaint, the Panel is free to assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <bcfootwear.com> domain name. The WHOIS information identifies Respondent as “Wuhu Best Corporation Footwear Industry Co., Ltd. / Wang Zaiwu,” which is not similar to the disputed domain name. Complainant further argues that it has not assigned, licensed, authorized, or otherwise agreed to Respondent’s use of the BC FOOTWEAR mark within the domain name. The Panel finds that Respondent is not commonly known by the disputed domain name, under Policy ¶ 4(c)(ii), as nothing in the record suggests otherwise. 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent previously used the disputed domain name both to reroute Internet users to the Registrar’s website and also to display highlights from a video game. The Panel finds that Respondent’s prior uses of the <bcfootwear.com> domain name to display content unrelated to Complainant and reroute users to unrelated sites were not bona fide offerings of good or services under Policy ¶ 4(c)(i) or legitimate or noncommercial or fair uses under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
Complainant also alleges that Respondent’s current use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Currently, the disputed domain name resolves to an inactive website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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 that Policy ¶ 4(a)(ii) has been met.
Respondent’s disputed domain name previously resolved to a site offering video gaming services to the Internet users diverted to the site, as well as, an inactive site. Respondent presumably benefited commercially from the diversion of these users to its own website when it was used for video gaming purposes. The Panel finds that Respondent has registered and used the domain name in bad faith according to Policy ¶ 4(b)(iv) because it has used the disputed domain name for its own commercial gain when it resolved to a video games site as well as when it resolved to an inactive website. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).
Complainant alleges that Respondent’s current use of the disputed domain name constitutes bad faith registration and use. Respondent’s <bcfootwear.com> domain name currently resolves to an inactive website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bcfootwear.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 28, 2011
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