Vans, Inc. v. tang sheng
Claim Number: FA1103001379964
Complainant is Vans, Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is tang sheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vansshoesoutlet.com>, registered with Hichina Zhicheng Technology Ltd.
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.
Judge Ralph Yachnin 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 submitted in both Chinese and English.
On March 24, 2011, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <vansshoesoutlet.com> domain name is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology Ltd. 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 March 29, 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 18, 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@vansshoesoutlet.com. Also on March 29, 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 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 Complainant 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 <vansshoesoutlet.com> domain name is confusingly similar to Complainant’s VANS mark.
2. Respondent does not have any rights or legitimate interests in the <vansshoesoutlet.com> domain name.
3. Respondent registered and used the <vansshoesoutlet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vans, Inc., has manufactured and sold skate shoes since the 1960s. Complainant also designs, markets, and distributes footwear, clothing and accessories, as well as performance snowboard boots and outerwear. Complainant owns a trademark registration for the VANS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,267,262 issued February 14, 1984).
Respondent, tang sheng, registered the <vansshoesoutlet.com> domain name on October 10, 2010. The disputed domain name resolves to a commercial website offering shoes that purport to be from Complainant’s product lines and which may be counterfeit knock-offs of Complainant’s products.
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 trademark registration for the VANS mark with the USPTO (Reg. No. 1,267,262 issued February 14, 1984). The Panel finds that registering its mark with the USPTO conclusively proves Complainant’s rights in the VANS mark for the purposes of Policy ¶ 4(a)(i), despite that Respondent lives or operates in a country outside the U.S. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to 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 argues that Respondent’s <vansshoesoutlet.com> domain name is confusingly similar to Complainant’s VANS mark because the disputed domain name begins with Complainant’s mark and merely appends the descriptive and generic terms “shoes” and “outlet” and the generic top-level domain (“gTLD”) “.com.” The Panel determines that adding generic or descriptive terms to Complainant’s mark does not modify the mark sufficiently to prevent a finding of confusingly similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel also concludes that the addition of the gTLD does not distinguish the disputed domain name from the mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel accordingly finds that Respondent’s <vansshoesoutlet.com> domain name is confusingly similar to Complainant’s VANS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been proven.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove it has rights and legitimate interests in the disputed domain name. The Panel concludes that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that respondent lacks and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant contends that it has not given Respondent any license, permission or authorization to use Complainant’s VANS mark. The WHOIS information for the <vansshoesoutlet.com> domain name lists the registrant as “tang sheng,” a name which has no apparent connection to the disputed domain name. The Panel thus holds that Respondent is not commonly known by the <vansshoesoutlet.com> domain name and lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant asserts that Respondent’s <vansshoesoutlet.com> domain name resolves to a commercial website selling what are purported to be Complainant’s footwear products. Complainant also argues that it is possible that these products are even counterfeit knock-offs of Complainant’s products. The Panel finds that using Complainant’s mark in a disputed domain name to sell Complainant’s products without authorization from, and in competition with, Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See 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).”); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
The Panel finds Policy ¶ 4(a)(ii) has been proven.
Complainant asserts that Respondent sells Complainant’s products, or counterfeit versions of Complainant’s products, in competition with Complainant at the <vansshoesoutlet.com> domain name. This use disrupts Complainant’s business by diverting Complainant’s profits to Respondent. The Panel holds that such activity indicates bad faith registration and use for the purposes of 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).”).
Complainant alleges that Respondent’s <vansshoesoutlet.com> domain name is used to attract Internet users seeking Complainant to a competing commercial website that offers Complainant’s products for sale. Complainant argues that the use of Complainant’s mark in conjunction with the sale of Complainant’s products creates a strong likelihood of confusion among consumers regarding the source, affiliation or sponsorship of the resolving website. Complainant contends that Respondent acts in this way in order to profit from the commercial sale of goods at the disputed domain name. The Panel thus determines that Respondent’s registration and use of the <vansshoesoutlet.com> demonstrate bad faith according to Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
The Panel finds Policy ¶ 4(a)(iii) has been proven.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vansshoesoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 20, 2011
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