Rocky Brands Wholesale LLC v. Abedellatif Shatila
Claim Number: FA1201001423871
Complainant is Rocky Brands Wholesale LLC (“Complainant”), represented by Robert J. Morgan of Porter, Wright, Morris & Arthur LLP, Ohio, USA. Respondent is Abedellatif Shatila (“Respondent”), Lebanon.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <durangoboots.com>, registered with ARGO TECHNOLOGIES, LLC.
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 January 10, 2012; the National Arbitration Forum received payment on January 17, 2012.
On January 11, 2012, ARGO TECHNOLOGIES, LLC confirmed by e-mail to the National Arbitration Forum that the <durangoboots.com> domain name is registered with ARGO TECHNOLOGIES, LLC and that Respondent is the current registrant of the name. ARGO TECHNOLOGIES, LLC has verified that Respondent is bound by the ARGO TECHNOLOGIES, LLC 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 January 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2012 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@durangoboots.com. Also on January 20, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 14, 2012, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <durangoboots.com> domain name is confusingly similar to Complainant’s DURANGO mark.
2. Respondent does not have any rights or legitimate interests in the <durangoboots.com> domain name.
3. Respondent registered and used the <durangoboots.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Rocky Brands Wholesale LLC, owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DURANGO mark (e.g., Reg. No. 790,751 registered June 8, 1965). Complainant uses the mark to promote and sell boots and other footwear.
Respondent, Abedellatif Shatila, registered the disputed domain name on January 4, 2012. The disputed domain name resolves to a website offering links to Complainant’s competitors in the footwear industry.
Respondent has been the respondent in prior UDRP proceedings in which it was ordered to transfer the disputed domain names to the respective Complainants. See Ashley Furniture Industries, Inc. v. Shatila, FA 1389362 (Nat. Arb. Forum June 23, 2011); see also PHD Group Pty Ltd v. Shatila, D2010-0812 (WIPO July 12, 2010).
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 contends that it has established its rights in the DURANGO mark by registering it with the USPTO (e.g., Reg. No. 790,751 registered June 8, 1965). Complainant submits printouts from the USPTO website which appear to verify that it is the owner of the registrations asserted. Therefore, the Panel finds that Complainant has established its rights in the DURANGO mark under Policy ¶ 4(a)(i) by registering it with the USPTO. 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 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).
Complainant also contends that Respondent’s <durangoboots.com> domain name is confusingly similar to its DURANGO mark. The disputed domain name includes the entire mark, merely adding the term “boots,” which coincidentally is what Complainant sells, and the generic top-level domain ("gTLD") “.com.” The Panel finds that the addition of a gTLD and a term that describes Complainant’s products does not remove the disputed domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
The Panel concludes that Complainant has shifted the burden of proof under this provision to Respondent by making a prima facie showing which indicates that Respondent lacks rights or legitimate interest in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has failed to file a response in this matter, which allows the Panel to assume that Respondent lacks rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will still examine the entire record and make findings in accordance with the factors listed in Policy ¶ 4(c) before determining whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent is not commonly known by the disputed domain name. Respondent has failed to offer any evidence that may have contradicted Complainant’s arguments. The WHOIS information identifies the registrant of the disputed domain name as “Abedellatif Shatila.” Based upon the WHOIS information and the lack of other evidence on record, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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).
Complainant also argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a website offering links to Complainant’s competitors in the boot and footwear fields. Respondent offers these links in a classic pay-per-click directory format. Based upon this use, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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)).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant claims that Respondent has shown a pattern of infringing domain name registration and use through multiple prior UDRP proceedings. Complainant submits that Respondent has two prior adverse UDRP decisions against it. See Ashley Furniture Industries, Inc. v. Shatila, FA 1389362 (Nat. Arb. Forum June 23, 2011); see also PHD Group Pty Ltd v. Shatila, D2010-0812 (WIPO July 12, 2010). Previous panels have determined that prior adverse UDRP proceedings suggests a pattern of bad faith registration. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”). Therefore, the panel finds that Respondent’s pattern of infringing registrations supports a finding of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant also claims that Respondent’s disputed domain name disrupts its business illustrating bad faith registration and use. Respondent’s disputed domain name resolves to a website offering links to Complainant’s competitors. Internet users may arrive at the website, click on one of the links, and then purchase goods from the website to which the links resolved. The Panel finds that this use clearly disrupts Complainant’s business, demonstrating bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Lastly, Complainant claims that Respondent registered and is using the disputed domain name for its own commercial gain constituting bad faith registration and use. Respondent’s disputed domain name resolves to a website offering links to Complainant’s competitors in the boot and footwear industry. Respondent presumably generates revenue by collecting a click-through fee for each Internet user it diverts to one of the linked sites. The Panel concludes the Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because of its attempts to commercially gain off of the confusion created by its disputed domain name. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Complainant has established 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 <durangoboots.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 15, 2012
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