Vans, Inc. v. Shumin Luo
Claim Number: FA1206001447511
Complainant is Vans, Inc. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Shumin Luo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vans-shoe.com>, registered with eNom 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2012; the National Arbitration Forum received payment on June 8, 2012.
On June 6, 2012, eNom Inc. confirmed by e-mail to the National Arbitration Forum that the <vans-shoe.com> domain name is registered with eNom Inc. and that Respondent is the current registrant of the names. eNom Inc. has verified that Respondent is bound by the eNom 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 June 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@vans-shoe.com. Also on June 8, 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 July 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions:
1. Complainant is an action sports lifestyle company that owns and operates over 160 retail stores in the U.S. and Europe.
2. Complainant’s business includes designing, marketing, and distributing footwear, clothing, and accessories, as well as performance snowboard boots and outerwear.
3. Complainant owns a trademark registration for its VANS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,267,262 registered February 14, 1984).
4. Complainant first used its trademark in commerce in February 1967.
5. Complainant also owns trademark registrations for the VANS mark with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1,276,089 registered May 21, 1999) and with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,200,282 registered on January 7, 2000).
6. Complainant uses the VANS mark in connection to its marketing and sponsorships relating to VANS shoes and other products.
7. Respondent’s disputed domain name, <vans-shoe.com>, is confusingly similar to Complainant’s VANS mark.
8. The disputed domain name is being used in conjunction with a website that offers shoes that compete directly with Complainant’s own line of shoes.
9. Complainant’s investigators attempted to purchase shoes from Respondent through the disputed domain name, but Respondent retained payment without sending the product, leading Complainant to believe the website is being used for fraud.
10. Respondent does not have rights or legitimate interests in the disputed domain name.
11. Respondent registered and uses the disputed domain name in bad faith due to commercial benefit, business disruption, and actual and/or constructive knowledge.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States action sports lifestyle company that owns and operates over 160 retail stores in the U.S. and Europe. Complainant’s business includes designing, marketing, and distributing footwear, clothing, and accessories, as well as performance snowboard boots and outerwear.
2. Complainant owns a trademark registration for its VANS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,267,262 registered February 14, 1984). Complainant also owns trademark registrations for the VANS mark with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1,276,089 registered May 21, 1999) and with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,200,282 registered on January 7, 2000).
3. Respondent registered the disputed domain name no earlier than July 30, 2011.The disputed domain name is being used in conjunction with a website that offers shoes that compete directly with Complainant’s own line of shoes. The website may be perpetrating a fraud on potential customers.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. In that regard, Complainant provides the Panel with a copy of its USPTO trademark registration certificate for its VANS mark (Reg. No. 1,267,262 registered February 14, 1984). Complainant also provides evidence of its trademark registrations for the VANS mark with the SAIC (Reg. No. 1,276,089 registered May 21, 1999) and UKIPO (Reg. No. 2,200,282 registered on January 7, 2000). The Panel concludes that Complainant’s USPTO, SAIC and UKIPO trademark registrations are evidence that Complainant holds rights in its VANS mark for the purposes of Policy ¶ 4(a) (i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a) (i).”); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a) (i)); The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s VANS mark. Complainant contends that Respondent’s domain name, <vans-shoe.com> is identical and/or confusingly similar to Complainant’s VANS mark. The Panel notes that the disputed domain name consists of Complainant’s mark in its entirety with the addition of a hyphen, the word “shoe,” which the Panel finds describes Complainant’s business and the generic top-level domain (“gTLD”) “.com.” The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s VANS mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s VANS mark and added the word “shoe” which would clearly be understood as a reference to the products sold by Complainant, thus enhancing the confusing similarity between the disputed domain name and the VANS mark;
(b) The disputed domain name resolves to Respondent’s website that purports to sell shoes in competition with those of Complainant , being a website that also appears to be perpetrating a fraud on potential customers;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) According to Complainant, Respondent is not affiliated, connected, or associated with Complainant and Complainant did not authorize Respondent’s use of the VANS mark. The Panel notes that the WHOIS database lists “Domain Privacy” as the registrant of the disputed domain name, with an administrative contact “Shumin Luo.” The Panel also notes that Respondent did not present any evidence that it is commonly known by the disputed domain name. The Panel determines that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c) (ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”).
(e) Complainant also submits that Respondent is attempting to pass off the disputed domain name as relating to Complainant’s mark and products. Complainant argues that private investigators attempted to purchase items from the disputed domain name where Respondent retained the payment without sending the product. Complainant asserts that Respondent’s disputed domain name resolves to a website that offers items that are in direct competition with Complainant. Complainant avers that Respondent’s disputed domain name is being used to compete directly with Complainant and/or for fraud, which Complainant claims do not constitute a bona fide or legitimate business use. The Panel finds that Respondent’s use of the disputed domain name to compete directly with Complainant and to perpetuate a fraudulent scheme is 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 domain name. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Secondly, Complainant contends that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b) (iv). Complainant claims that Respondent’s disputed domain name resolves to a website that sells competing shoe products. Complainant argues that Respondent commercially benefits from the sale of these products. Complainant further argues that Respondent is attempting to perpetrate a fraud against Internet users. Complainant alleges that it attempted to purchase some of the competing products found on the resolving website and that Respondent took Complainant’s money and never sent the products. Complainant contends that the sale of competing products and the fraudulent activity is evidence of bad faith. As the Panel determines that Complainant is commercially benefiting and receives that commercial benefit due to Internet user confusion as to Complainant’s affiliation with the disputed domain name, the Panel holds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b) (iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also H-D Mich., Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Thirdly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the VANS mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a) (iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a) (iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the VANS mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vans-shoe.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 4, 2012
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