national arbitration forum

 

DECISION

 

C. & J. Clark International Limited v. zhong tianxiang

Claim Number: FA1212001474757

 

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 zhong tianxiang (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <clarkshoes.biz>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.

 

Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically December 7, 2012; the National Arbitration Forum received payment December 7, 2012.

 

On December 11, 2012, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <clarkshoes.biz> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name.  PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM registration agreement and 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 Complaint and all Annexes, including a 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@clarkshoes.biz.  Also on December 17, 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 January 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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

 

  1. Complainant sets forth the following contentions in this proceeding:

 

Complainant owns the CLARKS mark for footwear, founded in 1825 and one of the largest footwear companies in the world. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 691,307 registered January 12, 1960). See Annex 5. Complainant also owns trademark registrations with the State Administration for Industry and Commerce of the People's Republic of China (“SAIC”) (e.g., Reg. No. 3,963,431 registered October 7, 2009). Complainant used the CLARKS mark exclusively and extensively over many years and thus acquired significant goodwill in association with its mark and a reputation for quality and excellence in Complainant’s products.

 

Respondent registered the <clarkshoes.biz> domain name, which Complainant became aware of in November of 2012. The <clarkshoes.biz> domain name resolves to a website at the <clarkshoesale.net> domain name, which sells shoes under the CLARKS mark, but that differ in appearance, quality, and materials from genuine CLARKS products. They are confirmed to be counterfeit. The <clarkshoes.biz> domain name is confusingly similar to Complainant’s CLARKS mark. Respondent is not commonly known by the <clarkshoes.biz> domain name and Respondent does not have rights or legitimate interests in the domain name. Respondent registered and uses the <clarkshoes.biz> domain name in bad faith, as Respondent uses Complainant’s CLARKS trademark to attract consumers to the resolving website and sells those consumers counterfeit goods in order to make a profit.

 

  1. Respondent did not submit a Response.

 

FINDINGS

Complainant established rights in the mark contained in its entirety within the disputed domain name.

 

The disputed domain name is confusingly similar to Complainant’s protected mark.

 

The Respondent has no rights to or legitimate interest in a domain name containing Complainant’s protected mark.

 

Respondent registered and used the disputed domain name in bad faith.

 

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 Complainant to 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.

 

Given 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 will draw such inferences as the Panel 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.”).

 

Identical to or Confusingly Similar

 

Complainant makes the claim that it owns the CLARKS trademark by its several trademark registrations with the USPTO (e.g., Reg. No. 691,307 registered January 12, 1960) and the SAIC (e.g., Reg. No. 3,963,431 registered October 7, 2009). The Panel finds that Complainant successfully demonstrated rights in its mark through trademark registrations with government agencies in the United States and in China. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)).

 

Complainant contends that the <clarkshoes.biz> domain name is confusingly similar to its CLARKS mark, in that the disputed domain name contains Complainant’s entire registered CLARKS trademark, and adds the term “shoes,” as well as the generic top-level domain (“gTLD”) “.biz.” The Panel notes that the domain name in fact omits the letter “s” from the CLARKS mark, or alternatively, uses the entire CLARKS mark, and adds the misspelled descriptive term “hoes,” instead of “shoes.” The Panel finds that using Complainant’s CLARKS mark, either wholly or partially, in addition to a descriptive term and the gTLD “.biz” in a domain name does not distinguish the mark; the domain name is confusingly similar to Complainant’s mark under a Policy ¶ 4(a)(i) analysis. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Enterprise Rent-A-Car Co. v. Azzurro, FA 289298 (Nat. Arb. Forum Sept. 24, 2004) (finding that adding a generic top-level domain such as “.biz” is insufficient to distinguish the domain name from the complainant’s mark).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i).

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy  ¶ 4(a)(i).

 

Rights to 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 of proof shifts to Respondent to show it does have such 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 alleges that no connection exists between Respondent and the <clarkshoes.biz> domain name, and that no individual associated with Respondent goes by the name “Clarks.” The Panel observes that the WHOIS information identifies “zhong tianxiang” as the registrant, and finds that the WHOIS information shows that Respondent is not commonly known by the <clarkshoes.biz> domain name for the purposes of a Policy ¶ 4(c)(ii) evaluation. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant also urges that Respondent does not have rights or legitimate interests in the <clarkshoes.biz> domain name, and argues that Respondent uses the resolving website to attempt to make sales of counterfeit shoes that Respondent purports to be Complainant’s products. The panel in eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007), stated that by selling counterfeit products, the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. This Panel similarly finds that by maintaining a website that sells counterfeit products under Complainant’s mark, Respondent does not make 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).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(ii). 

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent registered and currently uses the <clarkshoes.biz> domain name in bad faith. Respondent sells counterfeit items at the resolving website. Complainant contends that by selling counterfeit goods, Respondent uses the domain name to attract consumers through a confusingly similar domain name in order to make a commercial profit. The Panel finds that Respondent’s bad faith registration and use of the <clarkshoes.biz> domain name, under a Policy ¶ 4(b)(iv) analysis, is established.  Respondent attempts to confuse Internet users and attract customers to its website to generate profit. See 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). Moreover, this use establishes that Respondent had actual knowledge of Complainant’s rights in its mark as well as Complainant’s right to determine who markets its products and to protect itself from counterfeit goods.

 

Respondent makes no contentions relative to Policy ¶ 4(a)(iii). 

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <clarkshoes.biz> domain name be TRANSFERRED from Respondent to Complainant.  

 

Hon. Carolyn Marks Johnson, Panelist

Dated: January 25, 2013

 

 

 

 

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