Mycoskie, LLC v. Wu Xiao
Claim Number: FA1105001389005
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Taft Stettinius & Hollister LLP, Ohio, USA. Respondent is Wu Xiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toms-shoes.net>, registered with Guangzhou Ming Yang Information Technology Co., 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2011. The Complaint was submitted in both Chinese and English.
On June 23, 2011, Guangzhou Ming Yang Information Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <toms-shoes.net> domain name is registered with Guangzhou Ming Yang Information Technology Co., Ltd. and that Respondent is the current registrant of the name. Guangzhou Ming Yang Information Technology Co., Ltd. has verified that Respondent is bound by the Guangzhou Ming Yang Information Technology Co., 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 June 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 July 19, 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@toms-shoes.net. Also on June 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 July 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <toms-shoes.net> domain name is confusingly similar to Complainant’s TOMS mark.
2. Respondent does not have any rights or legitimate interests in the <toms-shoes.net> domain name.
3. Respondent registered and used the <toms-shoes.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mycoskie, LLC’s, exclusive licensee, TOMS Shoes, Inc., operates a company that manufactures and sells a variety of shoes. Complainant owns a trademark registration for the TOMS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,353,902 registered December 11, 2007).
Respondent, Wu Xiao, registered the <toms-shoes.net> domain name
on November 25, 2010. The disputed domain name resolves to a website selling
shoes that are similar to, and appear to be counterfeit versions 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 TOMS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,353,902 registered December 11, 2007). The Panel finds that Complainant has adequately established its rights in the mark by providing the Panel with this evidence of USPTO trademark registration. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks. The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”). The Panel finds that Complainant’s rights are sufficiently established for the purposes of Policy ¶ 4(a)(i) even though Respondent lives or operates in China and not the U.S. See 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 <toms-shoes.net> domain name is confusingly similar to Complainant’s TOMS mark because the disputed domain name only adds a few elements to Complainant’s mark: a hyphen, the descriptive term “shoes,” and the generic top-level domain (“gTLD”) “.net.” The Panel finds that the addition of a descriptive term obviously related to Complainant’s business does not relieve the disputed domain name of confusing similarity. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003) (finding that the <wellfargobank.com> domain name is confusingly similar to the WELLS FARGO mark, because altering the mark by one letter and adding “…the word ’bank,’ a word that both describes the type of business that Complainant engages in and is included in its <wellsfargobank.com> domain name, does not alleviate any confusing similarity.”). The Panel also concludes that adding a hyphen and a gTLD does not change the essential character of the disputed domain name to prevent a finding of confusing similarity. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); 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 thus holds that Respondent’s <toms-shoes.net> domain name is confusingly similar to Complainant’s TOMS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to the requirements of Policy ¶ 4(a)(ii), Complainant has the burden of presenting a prima facie case against Respondent in these proceedings. After such a prima facie case has been established, Respondent must bear the burden of proving rights and legitimate interests in the disputed domain name. Complainant presented a prima facie case in these proceedings; however, Respondent failed to respond. Respondent’s silence allows the Panel to make inferences that Complainant’s allegations are true and that Respondent accordingly lacks rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also 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). The Panel elects, however, to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether or not Respondent possesses any rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <toms-shoes.net> domain name identifies the registrant as “Wu Xiao,” which does not appear connected with the disputed domain name in any way. Based on this information and the lack of other affirmative evidence in the record showing a connection between Respondent and the disputed domain name, the Panel concludes that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Tercent Int. 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name).
Complainant contends that Respondent uses the <toms-shoes.net> domain name to operate a commercial website selling shoes. Complainant alleges that Respondent’s offered shoes compete with, and appear to be counterfeit versions of, the shoes sold by Complainant. The Panel finds that running a commercial website selling competing or counterfeit goods at the disputed domain name indicates that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent offers shoes for sale at the <toms-shoes.net> domain name and that the shoes are very similar to, and possibly even counterfeit versions of, Complainant’s shoes. By offering such a similar product for sale without authorization at the disputed domain name containing Complainant’s mark, Respondent is directly disrupting Complainant’s business by diverting potential customers and reducing Complainant’s potential sales. The Panel finds these activities are evidence of bad faith registration and use according to 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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant contends that Respondent maintains a commercial website at the <toms-shoes.net> domain name and uses Complainant’s mark in the disputed domain name to attract Complainant’s intending customers to Respondent’s website for Respondent’s personal profit. The Panel finds that the presence of Complainant’s mark in the disputed domain name and the offering of very similar, allegedly counterfeit, shoes at the resolving website lead to a likelihood of confusion among consumers as to the source or affiliation of the resolving website and disputed domain name. As Respondent engages in these activities for its own profit at Complainant’s expense, the Panel finds Respondent’s behavior demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”); 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 Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toms-shoes.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 22, 2011
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