national arbitration forum

 

DECISION

 

Arc'teryx Equipment Inc. v. Li Wen Zhong

Claim Number: FA1202001430570

 

PARTIES

Complainant is Arc'teryx Equipment Inc. (“Complainant”), represented by Terence P. O'Brien of Amer Sports Americas, Illinois, USA.  Respondent is Li Wen Zhong (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <arcteryxca.com>, registered with Xin Net Technology Corporation.

 

PANEL

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.

 

David A. Einhorn appointed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2012; the National Arbitration Forum received payment on February 21, 2012.The Complaint was submitted in both English and Chinese.

On February 21, 2012, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <arcteryxca.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name.  Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 24, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 15, 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@arcteryxca.com.  Also on February 24, 2012, the Chinese language 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 March 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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 Complainant and Commencement Notification and, absent a Respondent, determines that the remainder of the proceedings may be conducted in English.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant makes the following contentions:

a)   Complainant has rights in the ARC’TERYX mark which it uses in connection with mountaineering and rock climbing equipment as well as related clothing such as jackets;

b)   Complainant has registrations for the ARC’TERYX mark (e.g., Reg. No. 2,136,908 registered February 17, 1998) through the United States Patent and Trademark Office (“USPTO”);

c)   Respondent registered the <arcteryxca.com> domain name on May 20, 2011;

d)   The disputed domain name resolves to a website which sells counterfeit or unauthorized versions of Complainant’s products;

e)   The <arcteryxca.com> domain name is confusingly similar to Complainant’s mark as it consists of Complainant’s exact mark plus the addition of “ca”, which stands for Canada where Complainant is located;

f)    Respondent is not commonly known by the disputed domain name;

g)   Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use;

h)   Respondent is attempting to pass off as Complainant;

i)    Respondent’s registration and use of the disputed domain name is disruptive to Complainant;

j)    Respondent’s registration and use of the <arcteryxca.com> domain name was done in order to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or affiliation of the disputed domain name so as to attract Internet users to the <arcteryxca.com> domain name for commercial gain.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS AND 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."

 

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.

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.”).

 

Identical and/or Confusingly Similar

 

Complainant registered the ARC’TERYX mark, Reg. No. 2,136,908 on February 17, 1998 with the USPTO. Panels have found that the registration of a mark, regardless of the location of the respondent, is evidence of rights in that mark. See Miller Brewing Co. v. The 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 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). Therefore, the Panel finds that Complainant has rights in the ARC’TERYX mark pursuant to Policy ¶ 4(a)(i).

 

Complainant contends that Respondent’s <arcteryxca.com> domain name is confusingly similar to Complainant’s mark. Complainant alleges that the <arcteryxca.com> domain name is merely Complainant’s mark without the punctuation, with the two additional letters (“ca”), and with a generic top-level domain (“gTLD”). The Panel finds that Respondent’s deletion of the apostrophe in Complainant’s mark makes no difference in a Policy ¶ 4(a)(i) determination. See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark). The Panel also finds that Respondent’s addition of “ca” to Complainant’s mark fails to distinguish the disputed domain name from the mark, as “ca” stands for Canada, the location of Complainant’s business.  See R. T. Quaife Eng. Ltd. and Autotech Sport Tuning Corp. dba Quaife America v. Bill Luton, D2000-1201 (WIPO Nov. 14, 2000) (“the addition of a geographical description to a registered trademark to form a domain name is insufficient to prevent the composite domain name from being confusingly similar to complainant’s mark”).

 

Rights or Legitimate Interests

 

Complainant argues that Respondent is not commonly known by the <arcteryxca.com> domain name. Complainant asserts that Respondent is not an authorized distributor of Complainant’s products or a trademark licensee for the ARC’TERYX mark. The WHOIS record for the <arcteryxca.com> domain name lists “Li Wen Zhong” as the domain name registrant. The Panel finds that Respondent is not commonly known by the <arcteryxca.com> domain name under Policy ¶ 4(c)(ii). See 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).  See also 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).

 

Respondent also lacks rights and legitimate interests because the domain name resolves to a commercial website that takes advantage of the goodwill associated with Complainant’s marks.  See The Chip Merch., Inc. v Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to complainant’s mark and that respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent’s use of the domain name is an attempt to pass himself off as Complainant to sell products under Complainant’s mark.  This constitutes bad faith registration and use of the domain name. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that respondent’s use of <monsantos.com> to misrepresent itself as complainant and to provide misleading information to the public supported a finding of bad faith).

 

Complainant further asserts and this Panel accepts that Respondent is using the <arcteryxca.com> domain name to divert internet users, searching under Complainant’s ARC’TERYX mark, to Respondent’s own commercial website, where he sells goods under Complainant’s mark for his own commercial gain. The Panel does not need to enquire into the right of Respondent to sell merchandise under Complainant’s mark.  Presumably, that would be for the courts to decide if presented with the issue. It is not the use of the ARC’TERYX word on the website with which the Panel is concerned.  The bad faith finding is based upon Respondent’s registration and use of the <arcteryxca.com> domain name, which falsely implies a close affiliation between the trademark holder and the holder of the domain name. See Savin Corporation and Ricoh Corporation v. Kent S. Schisler, FA294206 (Nat. Arb. Forum Aug. 25, 2004).

 

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 <arcteryxca.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

David A. Einhorn, Panelist

Dated: April 10, 2012

 

 

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