Mycoskie, LLC v. caiyan / yan cai
Claim Number: FA1207001452955
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is caiyan / yan cai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tomsshoescanada.net>, registered with BIZCN.COM, 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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2012; the National Arbitration Forum received payment on July 16, 2012. The Complaint was submitted in both English and Chinese.
On July 12, 2012, BIZCN.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <tomsshoescanada.net> domain name is registered with BIZCN.COM, INC. and that Respondent is the current registrant of the names. BIZCN.COM, INC. has verified that Respondent is bound by the BIZCN.COM, 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 July 17, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 6, 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@tomsshoescanada.net. Also on July 17, 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 August 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
LANGUAGE OF THE PROCEEDINGS
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Mycoskie, LLC, owns trademark registrations for its TOMS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,353,902 registered December 11, 2007). Complainant uses the TOMS mark in connection with its products, which include shoes. Complainant markets its products through its website at <tomsshoes.com>, which it has held since May 7, 2006, as well as its <toms.com> website.
Respondent, caiyan / yan cai, currently holds the <tomsshoescanada.net> domain name, at which Respondent offers shoes for sale in direct competition with Complainant’s products. The shoes for sale at the website are counterfeit versions of Complainant’s products. The disputed domain name is confusingly similar to Complainant’s TOMS mark. Respondent has no rights or legitimate interests in the <tomsshoescanada.net> domain name and registered the name with actual knowledge of Complainant’s trademark rights in the mark. Respondent is not commonly known by the disputed domain name and does not use the domain name in a manner connected with a bona fide offering of goods or services or a legitimate noncommercial or fair use due to its sale of counterfeit shoes. Respondent registered the <tomsshoescanada.net> domain name in bad faith, with the intention of disrupting Complainant’s business, and to offer competing goods to those sold by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations for its TOMS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,353,902 registered December 11, 2007). Complainant uses the TOMS mark in connection with its products, which include shoes. Complainant markets its products through its website at <tomsshoes.com>, which it has held since May 7, 2006, as well as its <toms.com> website.
Respondent registered the <tomsshoescanada.net> domain name on February 15, 2012. Respondent uses the <tomsshoescanada.net> domain name to offer shoes for sale in direct competition with Complainant’s products.
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 owns rights in its TOMS mark pursuant to Policy ¶ 4(a)(i) through registrations with the USPTO (e.g., Reg. No. 3,353,902 registered December 11, 2007). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (registration of a mark with the USPTO establishes the complainant’s rights in the mark). Furthermore, Complainant is not required to register its mark in the country of Respondent’s residence for the purposes of Policy ¶ 4(a)(i). See 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).
Respondent’s <tomsshoescanada.net> domain name is confusingly similar to its TOMS mark. The geographic term “canada” in the disputed domain name cannot be considered dominant because of its “subordinate” position in the domain name and non-distinctive nature. The disputed domain name includes the descriptive term “shoes,” as well as the generic top-level domain (“gTLD”) “.net.” The addition of a geographic term, a descriptive term, and a gTLD do not alter the confusing similarity of the <tomsshoescanada.net> domain name to Complainant’s TOMS mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
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).
Respondent is not commonly known by the <tomsshoescanada.net> domain name for the purposes of Policy ¶ 4(c)(ii). The WHOIS information identifies “caiyan” as the registrant. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (respondent was not commonly known by the disputed domain name when it registered the domain name under an unrelated identity).
Respondent’s use of the <tomsshoescanada.net> domain name is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent maintains a website at the disputed domain name for the purpose of selling counterfeit goods under the TOMS mark to unsuspecting consumers and to steal consumers’ credit card numbers. The offering of counterfeit goods for sale using Complainant’s mark and misappropriating customers’ credit card numbers does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent registered the <tomsshoescanada.net> domain name to disrupt Complainant’s business because Respondent uses the domain name to offer precisely the same type of items as Complainant. See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008)( respondent’s diversionary use of the disputed domain name to market counterfeit versions of the complainant’s goods causes a disruption to the complainant’s business). The Panel finds that Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products causes disruption to Complainant’s business and is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tomsshoescanada.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 22, 2012
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