national arbitration forum

 

DECISION

 

C. & J. Clark International Limited v. 林建宇

Claim Number: FA1205001444818

 

PARTIES

Complainant is C. & J. Clark International Limited (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA.  Respondent is 林建宇 (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <outletclarks.com>, registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2012; the National Arbitration Forum received payment on May 18, 2012.  The Complaint was submitted in both Chinese and English.

 

On May 21, 2012, Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp confirmed by e-mail to the National Arbitration Forum that the <outletclarks.com> domain name is registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp and that Respondent is the current registrant of the name.  Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp has verified that Respondent is bound by the Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp 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 May 22, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 11, 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@outletclarks.com.  Also on May 22, 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 June 19, 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 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant makes the following assertions:

1.     Respondent’s <outletclarks.com> domain name is confusingly similar to Complainant’s CLARKS mark.

2.    Respondent does not have any rights or legitimate interests in the <outletclarks.com> domain name.

3.    Respondent registered or used the <outletclarks.com> domain name in bad faith.

           

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

 

 

FINDINGS

1.    Complainant uses the CLARKS mark in connection with Complainant’s footwear and clothing products.

    1. Complainant owns numerous trademark registrations for the CLARKS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 691,307 registered January 12, 1960) and with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 3,963,430 registered August 21, 2007).
    2. Respondent registered the <outletclarks.com> domain name on December 27, 2011.
    3. Respondent’s <outletclarks.com> domain name is confusingly similar to Complainant’s CLARKS website.
    4. Complainant did not authorize Respondent to use the <outletclarks.com> domain name.
    5. Respondent’s <outletclarks.com> domain name resolves to a website that offers counterfeit CLARKS shoes for sale.

7.    Respondent intentionally attempts to attract, for commercial gain, Internet users to the <outletclarks.com> website by creating a likelihood of confusion with Complainant’s CLARKS mark.

 

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.

 

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.”).

 

Language of the Proceedings

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

Identical and/or Confusingly Similar

 

According to Complainant, Complainant uses the CLARKS mark in connection with Complainant’s footwear and clothing products.  Complainant avers that it owns multiple trademark registrations for the CLARKS mark with the USPTO (e.g., Reg. No. 691,307 registered January 12, 1960) and SAIC (e.g., Reg. No. 3,963,430 registered August 21, 2007).  See Complainant’s Annexes 4-5.  In 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 held that the registration of a mark with both the USPTO and SAIC sufficiently demonstrated the complainant’s rights in the mark.  The Panel agrees with the Digi-Key Corp. panel, and concludes that Complainant established rights in the CLARKS mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant further contends that Respondent’s <outletclarks.com> domain name is confusingly similar to Complainant’s CLARKS website.  Complainant notes that the <outletclarks.com> domain name is comprised of Complainant’s entire CLARKS mark, the term “outlet,” and the generic top-level domain (“gTLD”) “.com.”  Complainant contends that the term “outlet” is a generic term and does not adequately distinguish the disputed domain name from Complainant’s mark.  In Arc'teryx Equip Inc. v. Harris, FA 1427341 (Nat. Arb. Forum Mar. 15, 2012), the panel found that the addition of the term “outlet” failed to remove the disputed domain name from the realm of confusing similarity.  In Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel concluded that the addition of a gTLD was irrelevant to a Policy ¶ 4(a)(i) analysis because a top-level domain is a required element for any domain name.  Based on this precedent and the facts in evidence, the Panel determines that Respondent’s <outletclarks.com> domain name is confusingly similar to Complainant’s CLARKS mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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.”).

 

Complainant does not expressly argue that Respondent is not commonly known by the <outletclarks.com> domain name.  However, Complainant does claim that Respondent has no relationship with Complainant and is not permitted to use Complainant’s CLARKS mark in a domain name.  Complainant contends that Respondent cannot show any condition under Policy ¶ 4(c) that would establish rights and legitimate interests in the disputed domain name.  As Respondent did not respond to this case, the Panel notes that Respondent did not provide any evidence that it is commonly known by the disputed domain name.  Finally, the WHOIS information for the <outletclarks.com> domain name identifies the domain name registrant as “林建宇,” which the Panel finds is not similar to the disputed domain name.  In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel found that the WHOIS information, the respondent’s failure to respond to the case, and the complainant’s lack of authorization of the respondent’s use of the complainant’s mark all demonstrated that the respondent was not commonly known by the disputed domain name.  In this case, the Panel similarly finds that the evidence in the record indicates that Respondent is not commonly known by the <outletclarks.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant alleges that Respondent’s <outletclarks.com> domain name resolves to a website that offers counterfeit CLARKS shoes for sale.  Complainant asserts that the resolving website uses the CLARKS mark in connection with the counterfeit shoes. See Complainant’s Annex 3.  Complainant argues that the sale of counterfeit products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  In Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007), the panel determined that the respondent lacked rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii) because the respondent sold counterfeit versions of the complainant’s products.  Consequently, the Panel holds that Respondent’s use of the <outletclarks.com> domain name to sell counterfeit shoes is evidence 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.

 

Registration and Use in Bad Faith

 

Complainant avers that Respondent intentionally attempts to attract, for commercial gain, Internet users to the <outletclarks.com> website by creating a likelihood of confusion with Complainant’s CLARKS mark.  Complainant claims that Respondent’s attempts to sell counterfeit CLARKS shoes is evidence that Respondent registered and uses the <outletclarks.com> domain name in bad faith under Policy ¶ 4(b)(iv).  In Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), the panel found that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) when the respondent sold counterfeit goods at the resolving website.  The Panel agrees with this precedent and determines that Respondent is attempting to commercially benefit by creating Internet user confusion as to Complainant’s affiliation with the disputed domain name, and the Panel finds Respondent guilty of Policy ¶ 4(b)(iv) bad faith registration and use regarding the <outletclarks.com> domain name.

 

 

 

 

 

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

 

 

John J. Upchurch, Panelist

Dated:  July 2, 2012

 

 

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