Arc'teryx Equipment Inc. v. Brian Harris
Claim Number: FA1201001427341
Complainant is Arc'teryx Equipment Inc. (“Complainant”), represented by Terence P. O'Brien of Amer Sports Americas, Illinois, USA. Respondent is Brian Harris (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arcteryxoutlet.net>, registered with GoDaddy.com, Inc.
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 January 31, 2012; the National Arbitration Forum received payment on January 31, 2012.
On January 31, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <arcteryxoutlet.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 February 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@arcteryxoutlet.net. Also on February 2, 2012, 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 March 1, 2012, 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 <arcteryxoutlet.net> domain name is confusingly similar to Complainant’s ARC’TERYX mark.
2. Respondent does not have any rights or legitimate interests in the <arcteryxoutlet.net> domain name.
3. Respondent registered and used the <arcteryxoutlet.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Arc'teryx Equipment Inc., designs, markets, and sells outdoor apparel and equipment under its ARC’TERYX mark. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ARC’TERYX mark (e.g., Reg. No. 2,136,908 registered February 17, 1998).
Respondent, Brian Harris, registered the <arcteryxoutlet.net> domain name on October 21, 2011. The disputed domain name resolves to a website selling counterfeit versions of Complainant’s 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 alleges rights in its ARC’TERYX mark under Policy ¶ 4(a)(i). In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), and Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), the panels found that a USPTO registration was sufficient for a complainant to demonstrate rights in a mark under Policy ¶ 4(a)(i). Complainant provides the Panel with copies of its trademark registrations with the USPTO for its ARC’TERYX mark (e.g., Reg. No. 2,136,908 registered February 17, 1998). Thus, the Panel holds that Complainant owns rights in its ARC’TERYX mark for the purposes of Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <arcteryxoutlet.net> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). Complainant argues that disputed domain name only differs from Complainant’s mark by the removal of the apostrophe, the addition of the generic term “outlet,” and the addition of the generic top-level domain (“gTLD”) “.net.” In Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000), and LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003), the panels found that the removal of an apostrophe did not serve to adequately distinguish a disputed domain name from a complainant’s mark. In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), and Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panels concluded that the addition of a generic term failed to remove a disputed domain name from the realm of confusing similarity. In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005), the panels held that the inclusion of a gTLD in a disputed domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. Accordingly, the Panel finds that Respondent’s <arcteryxoutlet.net> domain name is confusingly similar to Complainant’s ARC’TERYX mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <arcteryxoutlet.net> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In the case at bar, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the complaint allows the panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant does not present any arguments about whether or not Respondent is commonly known by the <arcteryxoutlet.net> domain name under Policy ¶ 4(c)(ii). Complainant does assert that Respondent is not licensed to use Complainant’s mark. The WHOIS information identifies “Brian Harris” as the registrant of the disputed domain name, which the Panel determines is not similar to the <arcteryxoutlet.net> domain name. Therefore, the Panel finds that Respondent is not commonly known by the <arcteryxoutlet.net> domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), and Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (the panels focused on the WHOIS information and the evidence in the record to determine that the respondent was not commonly known by the disputed domain name).
Complainant contends that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. Complainant alleges that Respondent’s <arcteryxoutlet.net> domain name resolves to a website that sells counterfeit or unauthorized versions of Complainant’s outdoor apparel and equipment. In Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007), and eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007), the panels determined that the sale of counterfeit or unauthorized versions of a complainant’s products was evidence that the respondent lacked rights and legitimate interests in a disputed domain name under Policy ¶¶ 4(c)(i) and (iii). Thus, the Panel finds that Respondent does not make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <arcteryxoutlet.net> domain name pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant satisfied Policy ¶ 4(a)(ii).
Respondent sells counterfeit or unauthorized versions of Complainant’s products which disrupts Complainant’s business. In Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008), and Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), the panels found that the selling of counterfeit or unauthorized versions of a complainant’s products disrupts a complainant’s business and is evidence of bad faith registration and use. Accordingly, the Panel finds that Respondent registered and uses the <arcteryxoutlet.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent registered and uses its <arcteryxoutlet.net> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is attempting to create confusion as to Complainant’s association with the disputed domain name by selling counterfeit or unauthorized versions of Complainant’s products. Complainant also argues that Respondent profits from such sales. In Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), and H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), the panels determined that a respondent’s selling of counterfeit or unauthorized versions of a complainant’s products creates the likelihood of confusion as to a complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion. Thus, the Panel finds that Respondent registered and uses the <arcteryxoutlet.net> domain name in bad faith for the purposes of Policy ¶ 4(b)(iv).
The Panel finds Complainant satisfied 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 <arcteryxoutlet.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 15, 2012
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