Mycoskie, LLC v. Li peng xie / pengxie li
Claim Number: FA1105001389006
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Taft Stettinius & Hollister LLP, Ohio, USA. Respondent is Li peng xie / pengxie li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toms-china.com>, registered with Bizcn.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2011; the National Arbitration Forum received payment on June 29, 2011. The Complaint was submitted in both English and Chinese.
On June 23, 2011, Bizcn.com confirmed by e-mail to the National Arbitration Forum that the <toms-china.com> domain name is registered with Bizcn.com and that Respondent is the current registrant of the name. Bizcn.com has verified that Respondent is bound by the Bizcn.com 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 July 5, 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 25, 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-china.com. Also on July 5, 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 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 <toms-china.com> domain name is confusingly similar to Complainant’s TOMS mark.
2. Respondent does not have any rights or legitimate interests in the <toms-china.com> domain name.
3. Respondent registered and used the <toms-china.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mycoskie, LLC, owns the TOMS mark. Complainant has multiple registrations for its mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,353,902 registered December 11, 2007). The TOMS mark is used in connection with the sale of footwear.
Respondent, Li peng xie / pengxie li, registered the <toms-china.com> domain name on August 27, 2010. The disputed domain name resolves to a website which offers for sale 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.
It is Complainant’s assertion that it has rights in the TOMS mark. The Panel finds that registration with a federal trademark authority is a sufficient basis upon which to make this claim. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). For the purposes of the Policy, the Panel finds that registration of a mark in one country establishes a complainant’s rights regardless of the country that the respondent is in. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the complainant to register all possible domain names that surround its substantive mark does not hinder the complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”). Complainant, having registered the TOMS mark with the USPTO (e.g., Reg. No. 3,353,902 registered December 11, 2007), has established rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that the disputed domain name is infringing upon its TOMS mark simply by the make-up of the domain name. Prior panels have found that the addition of a geographic term fails to distinguish a domain name from a complainant’s mark. See Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to the complainant’s registered SUNKIST mark and identical to the complainant’s common law SUNKIST GROWERS mark); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). Additionally, the inclusion of a hyphen between the complainant’s fully-incorporated mark and the geographic term does not differentiate them. 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 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). Finally, the addition of a generic top-level domain (“gTLD”) is irrelevant when determining if a domain name is confusingly similar to a complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Respondent has made the following changes to Complainant’s mark within the disputed domain name: adding the geographic term “china,” adding a hyphen, and adding the gTLD “.com.” Without more, the Panel finds that Respondent’s <toms-china.com> domain name is confusingly similar to Complainant’s TOMS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. As the Panel finds that Complainant has made a prmia facie case in support of this, the burden now shifts to the Respondent to contradict the claims. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). Respondent failed to submit a response to the complaint. As demonstrated by cases such as EK Success, Ltd. v. Yi-Chi, CPR0314 (CPR June 12, 2003) and Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004), where a respondent does not respond to a complaint, the panel may infer that the respondent agrees to all claims alleged by the complainant. The Panel will, however, review the record for information suggesting that Respondent does have rights or legitimate interests in the <toms-china.com> domain name.
Panels use the WHOIS listing for domain names, as well as any additional information that a complainant submits, to determine if a respondent is commonly known by a disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”). The information that Complainant has provided the Panel with suggests that Respondent is not commonly known by the disputed domain name as it has not licensed Respondent to use the TOMS mark. The WHOIS information for the <toms-china.com> domain name lists “Li peng xie / pengxie li” as the domain name registrant. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is using the <toms-china.com> domain name to sell counterfeit versions of the its shoes. This use is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s use of a confusingly similar domain name to sell counterfeit products is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).); see also Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011)(“Respondent’s sale of counterfeit versions of Complainant’s merchandise via the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.”). The disputed domain name resolves to a website which sells counterfeit versions of Complainant’s shoeware. Therefore, the Panel finds that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The sale of counterfeit products on a website resolving from a disputed domain name disrupts a complainant’s business of selling genuine versions of the products. This finding by past panels is demonstrated by similar holdings in cases such as CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding that resolving Internet users to a website selling counterfeit versions of a complainant’s products was disruptive to the complainant’s business and thus evidence of the respondent’s bad faith registration and use of the domain name under Policy 4(b)(iii)) and Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”). Complainant sells shoes under its TOMS mark. Respondent is using the <toms-china.com> domain name to sell counterfeit versions of Complainant’s shoes. Therefore, the Panel finds that Complainant’s business is being disrupted by Respondent’s registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).
Respondent, with the intent to sell counterfeit versions of Complainant’s products, profited from the registration and use of the disputed domain name. Creating confusion as to the affiliation of the disputed domain name to Complainant was aided by the registration and use of a confusingly similar domain name. Given this confusion experienced by Internet users, Respondent was able to make a greater profit. As such, the Panel finds that Respondent’s registration and use of the disputed domain name was intended to create potential commercial gain and thus demonstrates bad faith under Policy ¶ 4(b)(iv). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent to have registered and used the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood that Internet users may find a respondent’s website whilst searching for the complainant’s website, become confused as to the affiliation with or sponsorship of the disputed domain name to the complainant, and purchase goods through the disputed domain name rather than through the complainant); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding that where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
The Panel finds that 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-china.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 29, 2011
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