C.& J. Clark International Ltd., Inc. v. sellgucci / yanwu wu
Claim Number: FA1106001395868
Complainant is C.& J. Clark International Ltd., Inc. (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is sellgucci / yanwu wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shop-clarks.com>, registered with eNom.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2011; the National Arbitration Forum received payment on June 28, 2011.
On June 28, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <shop-clarks.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.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 June 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@shop-clarks.com. Also on June 28, 2011, the 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 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shop-clarks.com> domain name is confusingly similar to Complainant’s CLARKS mark.
2. Respondent does not have any rights or legitimate interests in the <shop-clarks.com> domain name.
3. Respondent registered and used the <shop-clarks.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, C.& J. Clark International Ltd., Inc., is a footwear company that designs, manufactures, distributes, and sells shoes for men, women and children both online and in retail stores. Complainant markets it footwear products under the CLARKS mark, which it has registered with the United States Patent and Trademark Office (“USPTO”) and the Chinese State Intellectual Property Office (“SIPO”):
USPTO
Reg. No. 691,307 registered January 12, 1960;
Reg. No. 1,436,513 registered April 14, 1987;
Reg. No. 2,344,417 registered April 25, 2000;
Reg. No. 2,354,422 registered June 6, 2000;
Reg. No. 3,537,691 registered November 25, 2008;
SIPO
Reg. No. 3,963,430 registered August 21, 2007; and
Reg. No. 3,963,431 registered October 7, 2009.
Respondent, sellgucci / yanwu wu, registered the <shop-clarks.com> domain name on July 21, 2010. The disputed domain name hosts a commercial website selling counterfeit footwear identified under the CLARKS mark.
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 markets it footwear products under the CLARKS mark, which it has registered with the USPTO and the SIPO. The Panel finds that Complainant’s trademark registrations prove Complainant’s rights in the mark under Policy ¶ 4(a)(i). 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant alleges that Respondent’s <shop-clarks.com> domain name is confusingly similar to Complainant’s CLARKS mark because the disputed domain name is created by merely adding the generic term “shop,” a hyphen, and the generic top-level domain (“gTLD”) “.com.” The Panel determines that the addition of the generic term “shop” preceding Complainant’s mark does not remove the disputed domain name from the realm of confusing similarity. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The Panel also concludes that neither the addition of a hyphen nor the gTLD affect the essential character of the disputed domain name under Policy ¶ 4(a)(i). See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); 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). The Panel thus holds that Respondent’s <shop-clarks.com> domain name is confusingly similar to Complainant’s CLARKS mark for the purposes of Policy ¶ 4(a)(i).
The Panel determines that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name, and the evidence put forth by Complainant to support this assertion establishes the prima facie case against Respondent required by Policy ¶ 4(a)(ii). Respondent now bears the burden of proving the existence of its rights and legitimate interests, but its failure to respond allows the Panel to conclude that Respondent has not met this burden and lacks rights and legitimate interests in the disputed domain name. See 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); see also 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 elects to consider the evidence presented in light of the Policy ¶ 4(c) factors.
Complainant argues that Respondent does not have permission from Complainant to use the CLARKS mark in any way or register domain names containing the mark. The WHOIS information for the disputed domain name lists the registrant as “sellgucci / yanwu wu.” The Panel concludes that Respondent is not commonly known by the disputed domain name and does not possess rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent operates a commercial website selling counterfeit CLARKS shoes at the <shop-clarks.com> domain name. The Panel finds that competing with Complainant by selling counterfeit versions of Complainant’s own products at the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) or ¶ 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 that Policy ¶ 4(a)(ii) has been satisfied.
Respondent sells counterfeit versions of Complainant’s footwear products at the <shop-clarks.com> domain name. The Panel finds that Respondent’s use of the disputed domain name to sell competing products disrupts Complainant’s business, especially when the products are counterfeit and have the potential to tarnish the reputation of Complainant relating to the quality of its goods. The Panel accordingly finds that Respondent has shown bad faith registration and use of the <shop-clarks.com> domain name pursuant to Policy ¶ 4(b)(iii). See Facton Ltd. v. Jiajin, D2010-2118 (WIPO January 25, 2011) (finding that use of the disputed domain name to sell counterfeit products under Complainant’s trademark is strong evidence of bad faith); 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).
Complainant alleges that Respondent registered and uses the CLARKS mark in the <shop-clarks.com> domain name specifically to attract Complainant’s customers. By selling products that identify themselves as Complainant’s authentic products, Respondent intends to create the impression among consumers that it has some sort of relationship with Complainant authorizing Respondent to sell Complainant’s goods. Therefore, the Panel finds that Respondent is using the disputed domain name to attract and mislead consumers for Respondent’s personal financial gain, which the Panel determines supports a finding of bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shop-clarks.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 5, 2011
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