Vans, Inc. v. gu ruoyu
Claim Number: FA1205001442306
Complainant is Vans Inc. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is gu ruoyu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vanshoes.us>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2012; the National Arbitration Forum received a hard coyp of the complaint on May 3, 2012.
On May 8, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <vanshoes.us> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 11, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 31, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <vanshoes.us> domain name is confusingly similar to Complainant’s VANS mark.
2. Respondent does not have any rights or legitimate interests in the <vanshoes.us> domain name.
3. Respondent registered or used the <vanshoes.us > domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant’s VANS mark is famous.
2. Respondent registered the <vanshoes.us> domain over two decades after the registration of Complainant’s VANS mark in the U.S. and over a decade following the registration of the VANS mark in China.
3. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VANS mark (e.g., Reg. No. 1,267,262 registered February 14, 1984).
4. Complainant also owns a Chinese registration with the State Administration for Industry and Commerce (“SAIC”) for the VANS mark (e.g., Reg. No. 1,276,089 registered May 21, 1999).
5. Respondent’s <vanshoes.us> domain name is confusingly similar to Complainant’s VANS mark.
6. Respondent lacks rights or legitimate interests in the <vanshoes.us> domain name.
7. Respondent has never operated any bona fide or legitimate business under the <vanshoes.us> domain name.
8. Respondent’s <vanshoes.us> domain resolves to a commercial search engine with links to competing or unaffiliated websites.
9. Respondent had notice of Complainant’s VANS mark and trademark rights when registering the <vanshoes.us> domain name.
10. Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks.
11. Respondent registered the <vanshoes.us> domain name in bad faith.
12. Respondent was involved in previous UDRP proceedings with Complainant where it was ordered that other domain names be transferred from Respondent to Complainant.
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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends that it has protectable rights for its VANS mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,267,262 registered February 14, 1984). Previous UDRP panels have held that evidence of registration with the USPTO for a given mark is sufficient to establish Complainant’s rights in a mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Complainant also provides evidence of its registration with the SAIC (e.g., Reg. No. 1,276,089 registered May 21, 1999.) Previous UDRP panels have held that evidence of a trademark registration with the SAIC was sufficient to establish rights in a mark under Policy ¶4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to [UDRP] ¶ 4(a)(i).”). The Panel finds that Complainant has established rights in the VANS mark pursuant to Policy ¶4(a)(i) based on its registration of the mark with the USPTO and SAIC in correlation with previous panel decisions.
Complainant alleges that Respondent’s <vanshoes.us> domain name is identical and confusingly similar to Complainant’s mark because it fully incorporates Complainant’s mark. Complainant further states that Respondent’s <vanshoes.us> domain name displays Complainant’s VANS mark in its entirety while deleting the letter “s” and adding the descriptive term “shoes.” The Panel notes that Respondent’s <vanshoes.us> domain name also adds the country-code top-level domain (“ccTLD”) “.us.” Based on previous UDRP cases the Panel finds that Respondent’s <vanshoes.us> domain name is confusingly similar to Complainant’s VANS mark pursuant to Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); 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); see also Solvay S.A. v. Karl Sandberg, FA 0706001011876 (Nat. Arb. Forum Aug. 13, 2007) (holding that the addition of the ccTLD “.us” does not make the disputed domain name sufficiently distinct as a top-level domain is required of all domain names.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel notes that there is no evidence in the record indicating that Respondent owns any service marks or trademarks that reflect the <vanshoes.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant presents evidence that the WHOIS information lists “gu ruoyu” as the registrant, who Complainant argues has never been commonly known by any of Complainant’s marks. Previous UDRP panels have found that the WHOIS information for a domain name, coupled with other information on the record, is determinative of whether a respondent is commonly known by a disputed domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use). This showing of evidence allows the Panel to find that Respondent is not commonly known by, and has not established rights or legitimate interests in, the <vanshoes.us> domain name pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent has never operated any bona fide or legitimate business under the <vanshoes.us> domain name, and is not making a protected non-commercial or fair use of the <vanshoes.us> domain name. Complainant alleges that Respondent’s <vanshoes.us> domain name directs Internet users to a commercial search engine with links to competing and unaffiliated websites e.g., <vans.com/microsites/customs/> , <zappos.com> , <shopping.com/Shoes>, <ask.com/Vans+Shoes+USA> and <buycheapr.com/Vans+shoes+US>. The Panel notes that these links often infer the use of pay-per-click links used to financially benefit Respondent. Former UDRP panels have found that using a confusingly similar domain name to redirect Internet users to a commercial search engine website with links to numerous websites that compete with Complainant’s cliental and presumably earn referral fees is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) or ¶ 4(c)(iv). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). Based on the evidence presented, the Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for competing services does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).
Complainant further argues that Respondent has engaged in a pattern of bad faith registration and use pursuant to Policy ¶4(b)(ii) through repeated domain name registrations that infringe on the trademark rights of Complainant. Complainant provides the Panel with a case citation that it alleges is evidence of Respondent’s pattern of bad faith registration and use. See Vans, Inc. v. guruoyu/ ruoyu gu, FA 1413583 (Nat. Arb. Forum Dec. 8, 2011). Based on this evidence the Panel finds that Respondent acted in bad faith under Policy ¶4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Complainant alleges that Respondent’s disputed domain name resolves to a website featuring a commercial search engine with links to the products of Complainant’s competitors. Complainant contends that such a use disrupts Complainant’s business by diverting Internet users to this competing website as well as preventing Complainant from reflecting its mark in the domain name. Previous panels have held that using a confusingly similar domain name to attract Internet users to a site displaying competing links disrupts a complainant’s business and constitutes bad faith registration pursuant to Policy ¶4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Based on this case precedent, the Panel finds that Respondent registered and uses the <vanshoes.us> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant further contends that Respondent has shown bad faith registration and use according to Policy ¶ 4(b)(iv). Prior panels have found bad faith registration under Policy ¶ 4(b)(iv) when a respondent registers a confusingly similar domain which is used to resolve to a commercial website offering hyperlinks to competing businesses. See 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 UDRP ¶ 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.’”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”). Complainant alleges that Respondent is creating a likelihood of confusion by using a confusingly similar domain name in order to attract Internet users to Respondent’s site. The Panel notes that the site features pay-per-click links which could possibly benefit Respondent financially. Based on Complainant’s assertions and evidence, the Panel finds that Respondent registered and uses the <vanshoes.us> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) when attracting consumers and financially profiting from the confusion between domain name and registered mark.
Complainant also contends that in light of the fame and notoriety of Complainant's VANS mark, it is inconceivable that Respondent could have registered the <vanshoes.us> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the [UDRP]."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name)."
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vanshoes.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 19, 2012
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