national arbitration forum

 

DECISION

 

Vans, Inc. v. qian xiaofeng a/k/a li junhan

Claim Number: FA1107001400122

 

PARTIES

Complainant is Vans, Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA.  Respondent is qian xiaofeng a/k/a li junhan (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <vansshoesuk.com>, registered with Fastdomain, Inc. and <vansukshop.com>, registered with Tucows, Inc.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2011; the National Arbitration Forum received payment on July 25, 2011.

 

On July 25, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <vansukshop.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 26, 2011, Fastdomain, Inc., confirmed by e-mail to the National Arbitration Forum that the <vansshoesuk.com> domain name is registered with Fastdomain, Inc. and that Respondent is the current registrant of the name.  Fastdomain, Inc. has verified that Respondent is bound by the Fastdomain, Inc. 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 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@vansshoesuk.com and postmaster@vansukshop.com.  Also on July 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 August 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <vansshoesuk.com> and <vansukshop.com> domain names are confusingly similar to Complainant’s VANS mark.

 

2.    Respondent does not have any rights or legitimate interests in the <vansshoesuk.com> and <vansukshop.com> domain names.

 

3.    Respondent registered and used the <vansshoesuk.com> and <vansukshop.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Vans, Inc., is an action sports lifestyle company that designs, markets, and distributes footwear and other products for action sports such as skateboarding, snowboarding, surfing, motorcycling and BMX.  Complainant operates more than 160 retail stores in the U.S. and Europe and owns trademark registrations for the VANS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,267,262 registered on February 14, 1984) and the Chinese State Intellectual Property Office (“SIPO”) (Reg. No. 1,276,089 registered on May 21, 1999).

 

Respondent, qian xiaofeng a/k/a li junhan, registered the <vansukshop.com> domain name on December 29, 2010 and the <vansshoesuk.com> domain name on January 7, 2011.  The <vansshoesuk.com> domain name resolves to a copycat website that offers competing or counterfeit versions of Complainant’s shoes for sale.  The <vansukshop.com> domain name resolves to a blog site with content relating to Complainant’s products and using Complainant’s trademark and images without permission.

 

DISCUSSION

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.

 

Preliminary Issue: Multiple Respondents

 

Complainant has alleged that the entities that control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  The Panel finds that although the addresses in the WHOIS records for the two disputed domain names are different, the email addresses are identical.  Additionally, both disputed domain names have a similar construction, consisting of the VANS mark and the geographic descriptor “UK,” and both resolve to websites displaying similar content, including unlicensed copyright protected images.  Based on these facts, the Panel finds that Complainant has supplied sufficient evidence to prove that the Respondent for both disputed domain names is the same individual or entity operating under aliases.

 

Identical and/or Confusingly Similar

 

In both the U.S. and China, Complainant has registered its VANS mark.  The Panel finds Complainant’s USPTO trademark registrations and its SIPO trademark registration establish Complainant’s rights in its VANS mark.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) and Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002).

 

Respondent’s <vansshoesuk.com> and <vansukshop.com> domain names are comprised of Complainant’s VANS mark along with the descriptive or generic terms “shoes” or “shop,” the geographic abbreviation “UK,” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that neither “shoes” nor “shop” adds a distinguishing feature to Complainant’s mark for the purposes of Policy ¶ 4(a)(i), consistent with Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005), and Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), discussing the addition of the generic term “promo” and the descriptive term “finance.”  The Panel finds that an added geographic term or abbreviation does not affect the essential character of Complainant’s mark to prevent confusing similarity.  See InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Internet users may believe that the website located at the <dogpileuk.com> domain name is run by a United Kingdom branch or affiliate of Complainant. . . . Consequently, the Panel finds that the geographic identifier “uk” does not significantly distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(ii).”).  Finally, repeated panel decisions, such as Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), have established that an attached gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  The Panel accordingly finds that Respondent’s <vansshoesuk.com> and <vansukshop.com> domain names are confusingly similar to Complainant’s VANS mark for the purposes of Policy ¶ 4(a)(i).

 

The Panel concludes Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

In order to satisfy the requirements of Policy ¶ 4(a)(ii) and to pass the burden to prove rights and legitimate interests to Respondent, Complainant must put forth a prima facie case against Respondent.  The Panel finds that Complainant’s has presented sufficient evidence to satisfy this requirement and thus the responsibility to demonstrate rights and legitimate interests now lies with Respondent.  As Respondent has not responded, however, the Panel has no evidence or arguments it can use to hold for Respondent.  The Panel thus infers that Complainant’s allegations against Respondent are true and that Respondent does not possess rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Nevertheless, the Panel elects to consider the record against the Policy ¶ 4(c) factors to make a complete determination on Respondent’s rights and legitimate interests.

 

Complainant alleges that Respondent has never been commonly known by the VANS mark or the <vansshoesuk.com> or <vansukshop.com> domain names.  Complainant asserts that it has never granted Respondent any license, permission or authorization to register domain names using the VANS mark.  The Panel finds additionally that the WHOIS information for the disputed domain names identifies the registrant as “qian xiaofeng a/k/a li junhan,” which implies no connection between Respondent and the disputed domain names.  Therefore, the Panel determines that Respondent is not commonly known by the disputed domain names and consequently lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), and Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003), both requiring some evidence of an identity-related connection between Respondent and the disputed domain names in order to find rights and interests.

 

Complainant contends that the <vansshoesuk.com> domain name hosts a copycat website that uses Complainant’s trademark and copyrighted materials to offer shoes competing with Complainant or to offer counterfeit versions of Complainant’s own products.  Complainant states that it received complaints that Respondent took shoe orders and accepted payment but never shipped the product to deceived customers.  The Panel finds that this deceptive use of the <vansshoesuk.com> domain name to sell counterfeit or competing products or to fraudulently acquire consumers’ money is not 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 G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).

 

Complainant also argues that the <vansukshop.com> domain name hosts a blog discussing Complainant’s products and using Complainant’s trademark and images without authorization.  The Panel finds that using a domain name consisting of Complainant’s mark to divert Internet users to a website not associated with Complainant and to provide information without authorization does not comport with the requirements for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”). 

 

The Panel concludes Complainant has satisfied Policy ¶ 4(a)(ii).  

 

Registration and Use in Bad Faith

 

Respondent’s <vansshoesuk.com> domain name uses Complainant’s VANS mark and copyrighted images to promote competing and/or counterfeit products. This disrupts Complainant’s business by creating increased competition for Complainant and potentially harming Complainant’s image.  The Panel therefore determines that Respondent’s activities at the <vansshoesuk.com> domain name reveal bad faith registration and use under Policy ¶ 4(b)(iii).  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); 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). 

 

The Panel finds that Respondent uses Complainant’s VANS mark in the disputed domain name to attract Internet users to Respondent’s website and offer counterfeit versions of Complainant’s products, creating a strong likelihood of consumer confusion as to the sponsorship of the resolving website.  Respondent clearly aims to profit from the diverted traffic resulting from the initial attraction and subsequent confusion.  Accordingly, the Panel finds that Respondent’s activities indicate bad faith registration and use for the purposes of Policy ¶ 4(b)(iv).  See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

 

Respondent’s <vansukshop.com> domain name is used to maintain a blog discussing Complainant’s products and providing other unauthorized information while using Complainant’s VANS mark and copyrighted images.  The Panel finds that Respondent is presumably profiting from this blog site in some way and thus concludes that Respondent uses the wrongly appropriated disputed domain name to divert Internet users for its own gain, which is evidence of bad faith registration and use according to Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). 

 

Respondent registered both disputed domain names with either actual or constructive knowledge of Complainant’s mark, which is further evidence of bad faith.  Previous panels have found that constructive knowledge is not enough to support a finding of bad faith.  Here, however, where Respondent makes liberal use not only of Complainant’s mark but also of Complainant’s product images, and purports to sell Complainant’s products.  Therefore, the Panel holds that Respondent had actual knowledge of Complainant’s mark at the time of registration, which supports a finding of bad faith registration and use according to Policy ¶ 4(a)(iii).  See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

 

The Panel concludes Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <vansshoesuk.com> and <vansukshop.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  September 6, 2011

 

 

 

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