Vans, Inc. v. Domain Administrator / Fundacion Private Whois
Claim Number: FA1205001445848
Complainant is Vans, Inc. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Domain Administrator / Fundacion Private Whois (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vansshoesuk.org>, registered with Internet.bs Corp.
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 25, 2012; the National Arbitration Forum received payment on June 1, 2012.
On May 27, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <vansshoesuk.org> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs 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 June 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@vansshoesuk.org. Also on June 5, 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 June 26, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vansshoesuk.org> domain name is confusingly similar to Complainant’s VANS mark.
2. Respondent does not have any rights or legitimate interests in the <vansshoesuk.org> domain name.
3. Respondent registered or used the <vansshoesuk.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant owns trademark rights for the VANS mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,267,262 registered February 14, 1984).
2. Complainant also owns registrations of the VANS marks throughout the world.
3. Complainant operates a company that markets itself as an “action sports lifestyle” company, manufacturing and selling skateboarding, snowboarding, surfing, and BMX products such as shoes, outerwear, and equipment; and hosts events such as the Vans Warped Tour and the Vans Triple Crown of Surfing. Complainant operates over 160 retail stores in the United States and in Europe.
4. Complainant hosts a website that features information regarding its activities at <www.vans.com>.
5. Respondent registered the <vansshoesuk.org> domain name on March 15, 2012. The disputed domain name is confusingly similar to Complainant’s VANS mark.
6. Respondent does not have any rights or legitimate interests in the disputed domain name nor has it even been commonly known by the VANS mark.
7. Respondent does not operate a bona fide or legitimate business under the disputed domain name.
8. Respondent has not secured permission or license to use the VANS mark in a domain name.
9. Respondent had actual knowledge of Complainant’s rights in the VANS mark. The <vansshoesuk.org> domain name resolves to a webpage that offers counterfeit products for sale, as well as products that are similar to those sold by Complainant.
10. Respondent is a "cyber squatter" because it holds multiple other domain names that are confusingly similar to marks belonging to other entities.
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.”).
Complainant claims to own trademark registrations for the VANS mark through registration with the USPTO (Reg. No. 1,267,262 registered February 14, 1984). In Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), the panel stated that a trademark registration with the USPTO is adequate to demonstrate rights under Policy ¶ 4(a)(i). The Panel concludes that Complainant sufficiently established its rights in the VANS mark for the purposes of Policy ¶ 4(a)(i) by registering the mark with the USPTO. Further, the Panel determines that Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country where Respondent resides and operates. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that the <vansshoesuk.org> domain name is confusingly similar to its VANS mark, because it incorporates the entire VANS mark. Further, the disputed domain name includes the descriptive term “shoes,” the geographic term “uk,” and the generic top-level domain (“gTLD”) “.org.” The panel in Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003), found the disputed domain name confusingly similar to the complainant’s mark because of the addition of the word “bank,” which described the nature of the complainant’s business. In Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004), the panel held that combining a well-known mark with a geographically descriptive term creates a confusingly similar mark. In Bloomberg Fin. L.P. v. Fischer, FA 1139982 (Nat. Arb. Forum Mar. 20, 2008), stated that adding the gTLD “.org” to a mark does not create a distinct domain name from the mark. The Panel finds that the addition of a descriptive term and a geographic term, as well as the addition of the gTLD “.org” does not change the disputed domain name enough to avoid confusing similarity between the domain name and Complainant’s mark under Policy ¶ 4(a)(i).
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 argues that Respondent has not been granted license or permission to use the VANS mark in any way, and the WHOIS information for the <vansshoesuk.org> domain name identifies “Domain Administrator / Fundacion Private Whois” as the registrant. Complainant asserts that the WHOIS information does not indicate Respondent is commonly known by the disputed domain name. The panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), found that the respondent was not commonly known by the disputed domain name based on the WHOIS information, as well as other evidence on the record. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel stated that the respondent’s lack of response, as well as the conflicting WHOIS information, did not support a finding that the respondent was commonly known by the disputed domain name. The Panel finds that the WHOIS information, coupled with Complainant’s assertion that it did not consent to Respondent’s use of its mark, demonstrate that Respondent is not commonly known by the <vansshoesuk.org> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent has not operated bona fide or legitimate business using the <vansshoesuk.org> domain name, and does not make a non-commercial or fair use of the disputed domain name. Complainant alleges that Respondent uses the <vansshoesuk.org> domain name to offer products that are counterfeit versions of Complainant’s products. See Exhibit D. The panel in Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007), found no rights or legitimate interests existed when the respondent used the disputed domain name to sell counterfeit versions of the complainant’s products in competition with the complainant. The panel in eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) similarly concluded that the respondent’s sale of counterfeit goods provides evidence that the 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 Panel finds that by selling products that purport to be Complainant’s, 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 pursuant to Policy ¶ 4(c)(iii).
Complainant asserts that Respondent is a “cyber-squatter,” and presents a list of numerous domain names registered by Respondent that Complainant claims are confusingly similar to famous marks belonging to other parties. Complainant provides WHOIS records for the various domain names it claims that Respondent improperly registered. See Exhibit E. The Panel notes that Complainant does not provide evidence of any formal UDRP decisions transferring ownership of any domain names from Respondent to the holder of the mark. The Panel finds that Respondent’s multiple registrations of domain names using marks that belong to a third party is evidence that Respondent registered and uses the <vansshoesuk.org> domain name in bad faith under Policy ¶ 4(b)(ii). See Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Complainant argues that Respondent disrupts Complainant’s business by offering products at the <vansshoesuk.org> domain name that compete with Complainant. Complainant provides evidence that the merchandise for sale at the website corresponding to the disputed domain name are substantially similar to those marketed by Complainant. See Exhibit D. The Panel determines that selling counterfeit goods at the resolving website in competition with Complainant constitutes an activity disruptive to Complainant’s business and demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Complainant argues that by selling “knock off” versions of Complainant’s shoes at the website connected with the <vansshoesuk.org> domain name, Respondent is engaged in bad faith registration and use. The Panel determines that Respondent’s use of the disputed domain name to sell counterfeit items creates confusion for Internet consumers who are attracted to the disputed domain name because of a perceived affiliation between the resolving website and Complainant’s business and that such activity demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Complainant contends that Respondent had actual and constructive knowledge of Complainant’s rights in the VANS mark before Respondent registered the <vansshoesuk.org> domain name. Complainant asserts that Respondent’s constructive knowledge is supported by Complainant’s many registrations of its VANS mark with authorities in the United Kingdom. The Panel notes that Complainant does not provide evidence of its trademark registrations in the United Kingdom. The Panel determines that constructive knowledge is generally insufficient to find Respondent registered the disputed domain name in bad faith; however, the Panel concludes that the content on the resolving website demonstrates that Respondent had actual knowledge of the VANS mark before Respondent registered the disputed domain name, and finds that Respondent registered the <vansshoesuk.org> domain name in bad faith under Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also 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 ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vansshoesuk.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 6, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page