C. & J. Clark International Limited v. liao huakai
Claim Number: FA1212001474557
Complainant is C. & J. Clark International Limited (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is liao huakai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clarksshoesale.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2012; the National Arbitration Forum received payment on December 6, 2012. The Complaint was received in both Chinese and English.
On December 11, 2012, Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <clarksshoesale.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn 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 December 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 January 7, 2013 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@clarksshoesale.com. Also on December 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 January 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
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
a. Complainant has rights in the CLARKS mark and uses the mark in the sale and design of footwear and shoes. Complainant bases its rights on registrations with the United States Patent and Trademark Office (“USPTO”). See, e.g., Reg. No. 691,307 registered on Jan. 12, 1960. Furthermore, Complainant has rights in the mark under registrations in China with the State Administration for Industry and Commerce (“SAIC”). See, e.g., Reg. No. 3,963,430 registered on Aug. 21, 2007.
b. Respondent’s domain name is confusingly similar in that it contains the entire CLARKS mark plus the generic terms “shoe” and “sale.” The term “shoe” is simply descriptive of the type of products Complainant sells under the CLARKS mark. The term “sale” simply implies that the goods to be sold on the disputed domain name’s resolving website will be offered at discounted prices. Finally, the addition of “.com” is not enough to distinguish the disputed domain name from the CLARKS mark.
c. Respondent lacks rights and legitimate interests in the <clarksshoesale.com> domain name. Respondent is not known by the disputed domain name, nor is anyone known by the CLARKS mark affiliated with it. Complainant has no relationship with Respondent, nor has it given permission to Respondent to use the mark.
d. Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name. The disputed domain name resolves to a website selling counterfeits of Complainant’s CLARKS shoes and footwear.
e. Respondent registered and is using the <clarksshoesale.com> domain name in bad faith. Respondent seeks to intentionally attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant’s CLARKS mark. Respondent then seeks to lure Internet users into viewing the domain name’s resolving website so that the users will buy Respondent’s counterfeit goods.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CLARKS mark. Respondent’s domain name is confusingly similar to Complainant’s CLARKS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <clarksshoesale.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 have rights in the CLARKS mark, which it uses in the sale and design of footwear and shoes. Complainant bases its rights on registrations with the USPTO. See, e.g., Reg. No. 691,307 registered on Jan. 12, 1960. Furthermore, Complainant claims to have rights in the mark under registrations in China with the SAIC. See, e.g., Reg. No. 3,963,430 registered on Aug. 21, 2007. Because Respondent is located in China, Complainant’s evidence of registration in that country satisfies its showing under Policy ¶ 4(a)(i). See Nervous Tattoo, Inc. v. qiu xianzheng, FA 1296071 (Nat. Arb. Forum Jan. 18, 2010) (finding that the complainant established rights under Policy ¶ 4(a)(i) by demonstrating that it owned a trademark registration with China’s SAIC).
Complainant further contends that Respondent’s <clarksshoesale.com> domain name is confusingly similar in that it contains the entire CLARKS mark plus the generic terms “shoe” and “sale.” Complainant argues that the term “shoe” is simply descriptive of the type of products Complainant sells under the CLARKS mark. Complainant next argues that the term “sale” simply implies that the goods to be sold on the disputed domain name’s resolving website will be offered at discounted prices. Finally, Complainant claims that the addition of “.com” is not enough to distinguish the disputed domain name from the CLARKS mark. The Panel agrees with the foregoing arguments made by Complainant. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) (finding the <porschesales.com> domain name to be confusingly similar where the respondent added the generic term “sales” to the complainant’s PORSCHE mark); Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Therefore, the Panel concludes that the Respondent’s <clarksshoesale.com> domain name is confusingly similar to Complainant’s CLARKS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not known by the disputed domain name, nor is Respondent known by the CLARKS mark affiliated with it. Complainant claims that it has no relationship with Respondent, nor has it given permission to Respondent to use Complainant’s mark. The WHOIS information lists “liao huakai” as the registrant of the domain name. The absence of evidence linking Respondent to the <clarksshoesale.com> domain name establishes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant next contends that Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <clarksshoesale.com> domain name. Complainant argues that the disputed domain name resolves to a website selling counterfeits of Complainant’s CLARKS shoes and footwear. The domain name does in fact resolve to a website wherein Complainant’s CLARKS mark is used extensively in the sale of apparently counterfeit shoes. A respondent cannot establish a bona fide offering of goods when those goods are counterfeit, and the offering of such goods cannot therefore be a legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Thus, Respondent is not providing a Policy ¶ 4(c)(i) bona fide offering of goods nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use in soliciting counterfeit goods.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent seeks to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s CLARKS mark. Complainant argues that Respondent then seeks to lure Internet users into viewing the <clarksshoesale.com> domain name’s resolving website so that the users will buy Respondent’s counterfeit goods. The Panel finds that such a use is evidence of a Policy ¶ 4(b)(iv) bad faith use and registration. 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). Thus, the Panel finds that Respondent’s attempt to attract Internet users to its counterfeit goods is evidence of a Policy ¶ 4(b)(iv) act of bad faith use and registration.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clarksshoesale.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 21, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page