ACI International v. Liu Dongping
Claim Number: FA1106001396072
Complainant is ACI International (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, North Carolina, USA. Respondent is Liu Dongping (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lagearsshoes.com> and <kicksla.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns.Com.Cn.
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 June 28, 2011; the National Arbitration Forum received payment on June 28, 2011. The Complaint was received in both Chinese and English.
On July 14, 2011, Beijing Innovative Linkage Technology Ltd. d/b/a Dns.Com.Cn confirmed by e-mail to the National Arbitration Forum that the <lagearsshoes.com> and <kicksla.com> domain names are registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns.Com.Cn and that Respondent is the current registrant of the names. 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 July 20, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 9, 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@lagearsshoes.com and postmaster@kicksla.com. Also on July 20, 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 August 11, 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lagearsshoes.com> and <kicksla.com> domain names are confusingly similar to Complainant’s L.A. GEAR mark.
2. Respondent does not have any rights or legitimate interests in the <lagearsshoes.com> and <kicksla.com> domain names.
3. Respondent registered and used the <lagearsshoes.com> and <kicksla.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ACI International, was founded in 1979. Complainant owns the L.A. GEAR mark and in 1985 began marketing and selling footwear lines under the mark. Complainant holds numerous trademark registrations for its L.A. GEAR mark with the United States Patent and Trademark Office (“USPTO”) (1,815,958 registered January 11, 1994).
Respondent, Liu Dongping, registered the <lagearsshoes.com> and <kicksla.com> domain names on October 9, 2010. The disputed domain names resolve to Respondent’s websites which offer for sale counterfeit replicas of Complainant’s goods and footwear.
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 claims that it has established rights in the L.A. GEAR mark. Past panels have held that trademark rights can be established through registration with a federal trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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.”). Complainant is not required to register its mark in the country where Respondent resides or operates so long as the mark is registered in some jurisdiction. 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); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). In the instant proceeding, Complainant holds a number of trademark registrations for its L.A. GEAR mark with the USPTO (1,815,958 registered January 11, 1994). The Panel finds that Complainant has demonstrated its rights in the L.A. GEAR mark, under Policy ¶ 4(a)(i), through its USPTO trademark registration.
Complainant also contends that Respondent’s <lagearsshoes.com> and <kicksla.com> domain names are confusingly similar to its L.A. GEAR mark. The <lagearsshoes.com> domain name incorporates Complainant’s mark and alters it by deleting the space between the words of the mark, deleting the periods from “L.A.,” deleting the word “gear,” adding the descriptive words “shoes” and an additional letter “s,” and by adding the generic top-level domain (“gTLD”) “.com.” The <kicksla.com> domain name utilizes Complainant’s mark, deletes the periods from “L.A.,” deletes the word “gear,” and adds the descriptive word “kicks,” which is a colloquial term for shoes, and adds the gTLD “.com.” The Panel finds that deleting spaces and punctuation, and adding a gTLD do not factor into a Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that deleting words of the mark does not adequately distinguish the disputed domain name from Complainant’s mark. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). The Panel finds that the addition of a single letter does not remove the disputed domain name from the realm of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive) Finally, the Panel finds that adding descriptive words to a mark such as “shoes” and “kicks,” which reference Complainant’s business in the footwear industry, does not help to avoid a finding of confusing similarity. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s L.A. GEAR mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel stated, “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.” Here, Complainant has presented a prima facie showing in support of its allegations. Respondent failed to respond to the Complaint, which the Panel may interpret as an admission that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will still examine the record to decide whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Although Complainant does not explicitly address the argument, the Panel may discuss whether Respondent is commonly known by the disputed domain names. The WHOIS information identifies Respondent as “Liu Dongping,” which is not similar to the disputed domain names and no evidence is presented that Complainant authorized or licensed Respondent to use the L.A. GEAR mark in the disputed domain names. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See 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 <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Respondent’s <lagearsshoes.com> and <kicksla.com> domain names resolve to Respondent’s websites which offer for sale counterfeit products of Complainant’s footwear under Complainant’s L.A. GEAR mark. The Panel finds that Respondent’s use of the confusingly similar disputed domain names in order to sell counterfeit goods 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 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.
Complainant claims that Respondent registered and is using the disputed domain names for the purpose of disrupting Complainant’s business. Respondent’s disputed domain names redirect Internet users to websites which sell knock-off versions of Complainant’s footwear. Internet users may purchase goods from Respondent instead of Complainant as a result. The Panel holds that Respondent’s registration and use of the disputed domain names for this purpose does disrupt Complainant’s footwear business and constitutes bad faith 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 Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
The <lagearsshoes.com> and <kicksla.com> domain names resolve to Respondent’s own websites which offer for sale counterfeit replicas of Complainant’s footwear using Complainant’s L.A. GEAR mark and confusingly similar disputed domain names. Complainant argues that the disputed domain names creates a likelihood of confusion for Internet users as to Complainant’s sponsorship of, or affiliation with, the domain names and the footwear that is being sold. Respondent tries to profit from this confusion through increased sales and Internet traffic. The Panel concludes that Respondent registered and is using the disputed domain names in bad faith 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 Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
The Panel finds that 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 <lagearsshoes.com> and <kicksla.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 12, 2011
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