C. & J. Clark International Limited v. Huang Qipeng
Claim Number: FA1106001396367
Complainant is C. & J. Clark International Limited (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Huang Qipeng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clarksshoesoutlets.com>, registered with HiChina Zhicheng Technology Ltd.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2011; the National Arbitration Forum received payment on June 29, 2011. The Complaint was received in both the Chinese and English languages.
On June 29, 2011, HiChina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <clarksshoesoutlets.com> domain name is registered with HiChina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Ltd. has verified that Respondent is bound by the HiChina Zhicheng Technology 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 July 1, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of July 21, 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@clarksshoesoutlets.com. Also on July 1, 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 Tyrus R. Atkinson, Jr., 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 <clarksshoesoutlets.com> domain name is confusingly similar to Complainant’s CLARKS mark.
2. Respondent does not have any rights or legitimate interests in the <clarksshoesoutlets.com> domain name.
3. Respondent registered and used the <clarksshoesoutlets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, C. & J. Clark International Limited, is a large global company offering shoes and other accessories. Complainant owns a myriad of federal trademark registrations with both the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 691,307 registered January 12, 1960) and the Chinese State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 3,963,430 registered August 21, 2007). The mark is used as its brand name in the shoe industry.
Respondent, Huang Qipeng, registered the disputed domain name on October 11, 2010. The disputed domain name resolves to a commercial retail site offering what appears to be Clark shoes for sale. The website is a competing website based upon Complainant’s assertion that the shoes for sale on the site are counterfeit and Respondent is not authorized to sell Clark 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 claims to have established its rights in the CLARKS mark by registering the mark with both the USPTO and the SIPO. Complainant has offered sufficient evidence in the form of trademark certificates to prove that it does in fact hold those registrations with the USPTO (e.g., Reg. No. 691,307 registered January 12, 1960) and the SIPO (e.g., Reg. No. 3,963,430 registered August 21, 2007). Therefore, the Panel finds that Complainant has established its rights in the CLARKS mark under Policy ¶ 4(a)(i) by registering that mark with the USPTO (e.g., Reg. No. 691,307 registered January 12, 1960). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant also claims that Respondent’s disputed domain name is confusingly similar to its own CLARKS mark. The disputed domain name includes the entire mark while adding the descriptive term “shoes,” Complainant’s primary products, and the generic term “outlets.” The disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive and generic words along with a gTLD do not sufficiently differentiate the disputed domain name from Complainant’s CLARKS mark making the two confusingly similar under Policy ¶ 4(a)(i). 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.”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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.”).
Policy ¶ 4(a)(i) has been established.
Complainant has met its initial burden of proof by making what the Panel finds to be a prima facie case against Respondent indicating that it lacks rights or legitimate interests in the disputed domain name. Respondent now bears the burden of proving it has rights or legitimate interests in the disputed domain name due to Complainant’s prima facie showing. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”). The Panel may assume that Respondent lacks rights or legitimate interests in the disputed domain name based upon its failure to provide a response in this matter. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, before making a determination regarding Respondent’s rights or legitimate interests in the disputed domain name the Panel will examine the entire record and make such a determination in accordance with the factors included Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Respondent has offered no evidence to support a finding that it is commonly known by the disputed domain name. The WHOIS information identifies the registrant as “Huang Qipeng.” The Panel finds that nothing in the record or the WHOIS information indicates that Respondent is commonly known by the disputed domain name; thus, the Panel finds in kind under Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant alleges that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name resolves to a site where it sells goods in direct competition with Complainant’s shoe business. The Panel finds that using the disputed domain name to compete directly with Complainant in the shoe market does not constitute 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 Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Policy ¶ 4(a)(ii) has been established.
Complainant maintains that Respondent’s disputed domain name disrupts its business. The disputed domain name resolves to a site which sells shoes in direct competition with Complainant. Internet users may arrive at the site and purchase goods from Respondent instead of Complainant. The Panel finds that this use disrupts Complainant’s business by stealing customers and constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also 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).
Complainant argues that Respondent is gaining commercially from the operation of the disputed domain name. Respondent’s disputed domain name resolves to its own website where it offers shoes for sale. Complainant sells shoes as its primary business making Respondent, a competitor. The Panel finds that Respondent is using the disputed domain name to divert Internet users seeking out Complainant’s products to its own commercial website and selling goods which compete with Complainant’s own legitimate product offerings. The Panel also finds that this use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also 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)).
Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clarksshoesoutlets.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 8, 2011
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