C. & J. Clark International Limited v. rong zhang
Claim Number: FA1104001385864
Complainant is C. & J. Clark International Limited (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is rong zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clarksshoes-store.com>, registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2011; the National Arbitration Forum received payment on April 27, 2011. The Complaint was received in both Chinese and English.
On April 29, 2011, BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN confirmed by e-mail to the National Arbitration Forum that the <clarksshoes-store.com> domain name is registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN and that Respondent is the current registrant of the name. BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN has verified that Respondent is bound by the BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN 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 May 6, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 26, 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@clarksshoes-store.com. Also on May 6, 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 June 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a 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 <clarksshoes-store.com> domain name is confusingly similar to Complainant’s CLARKS mark.
2. Respondent does not have any rights or legitimate interests in the <clarksshoes-store.com> domain name.
3. Respondent registered and used the <clarksshoes-store.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, C. & J. Clark International Limited, commenced business in 1825. Complainant owns the CLARKS mark and uses it for the design, manufacture, and distribution of shoes and for the operation of its retail shoe stores. Complainant holds numerous trademark registrations for its CLARKS mark including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 691,307 issued Jan. 12, 1960) and with China’s State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 176,114 issued Dec. 28, 1995).
Respondent, rong zhang, registered the <clarksshoes-store.com> domain name on December 31, 2010. The disputed domain name resolves to Respondent’s commercial website which sells counterfeit versions of Complainant’s shoes using Complainant’s CLARKS mark and logo.
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 rights in its CLARKS mark through its registration with a trademark authority, pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Here, Complainant holds numerous trademark rights in its CLARKS mark with the USPTO (e.g., Reg. No. 691,307 issued Jan. 12, 1960) and with China’s SIPO (e.g., Reg. No. 176,114 issued Dec. 28, 1995).
Respondent’s <clarksshoes-store.com> domain name is confusingly similar to its CLARKS mark. The disputed domain name utilizes Complainant’s entire mark and differentiates only by adding the descriptive words “shoes” and “store,” a hyphen, and a generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a hyphen along with a gTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Also, the Panel finds that the additions of descriptive words that relate to Complainant’s business does not remove the confusing similarity of the domain name. See 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.”). The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s CLARKS mark under Policy ¶ 4(a)(i).
The Panel finds that the requirements of Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent has no rights or legitimate interests in the <clarksshoes-store.com>. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated, “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.” Here, Complainant has made a prima facie showing in support of its claims against Respondent. Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent waives any rights or legitimate interests in the domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel chooses to review the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “rong zhang,” which is not similar to the <clarksshoes-store.com> domain name. Complainant claims that Respondent has no relationship with, or permission from, Complainant to register or use its CLARKS mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name, under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent’s disputed domain name resolves to a website which offers for sale counterfeits of Complainant’s shoes and displays Complainant’s CLARKS mark and logo. The Panel finds that Respondent’s use of the <clarksshoes-store.com> domain name to reroute Internet users to its own website to sell counterfeit Complainant’s shoes is not 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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 the requirements of Policy ¶ 4(a)(ii) have been met.
Respondent’s registration and use of the disputed domain name disrupts Complainant’s business. Respondent’s resolving website features knock-off versions of Complainant’s shoes. The images on Respondent’s site include Complainant’s mark directly on the shoe products. Internet users intending to purchase shoes from Complainant may counterfeit goods from Respondent instead. The Panel finds such registration and use is evidence of bad faith under Policy ¶ 4(b)(iii). See 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); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
The Panel infers that Respondent profits from the sale of products on its resolving website. Internet users searching for Complainant may find Respondent’s website and, due to the confusingly similar disputed domain name and the offer of similar products under Complainant’s CLARKS mark, may be misled as to Complainant’s affiliation with the website. Respondent attempts to profit from this confusion through shoe sales. The Panel determines that Respondent’s registration and use of the <clarksshoes-store.com> domain name for commercial gain constitutes bad faith under 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 Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have 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 <clarksshoes-store.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 9, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page