national arbitration forum

 

DECISION

 

Mycoskie, LLC v. zhang yanping / hangyanping z

Claim Number: FA1212001477430

 

PARTIES

Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA.  Respondent is zhang yanping / hangyanping z (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tomschaussures.com>, registered with SHANGHAI YOVOLE NETWORKS INC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 26, 2012; the National Arbitration Forum received payment on December 28, 2012. The Complaint was submitted in both Chinese and English.

 

On December 28, 2012, SHANGHAI YOVOLE NETWORKS INC. confirmed by e-mail to the National Arbitration Forum that the <tomschaussures.com> domain name is registered with SHANGHAI YOVOLE NETWORKS INC. and that Respondent is the current registrant of the name.  SHANGHAI YOVOLE NETWORKS INC. has verified that Respondent is bound by the SHANGHAI YOVOLE NETWORKS 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 January 4, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 24, 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@tomschaussures.com.  Also on January 4, 2013, 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 29, 2013, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

Complainant makes the following assertions:

    1. Complainant, Mycoskie, LLC, is the owner of several U.S. Federal Trademark registrations and/or applications for the term TOMS for use in connection with the sale of a variety of goods, but most commonly and most prominently men’s, women’s, and children’s shoes. Complainant’s exclusive licensee, TOMS Shoes, Inc., operates as a company under the name TOMS Shoes, Inc. Complainant’s licensee has sold such shoes through its primary website located at <toms.com>.
    2. Complainant owns and provides evidence that it is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TOMS mark (e.g., Reg. No. 3,353,902, registered Dec. 11, 2007).
    3. Respondent’s <tomschaussures.com> domain name is identical to Complainant’s TOMS mark, given that the second term is merely a generic descriptor as “chassures” is the French word for “shoes”, and the connotation and the commercial impression thereof is identical.
    4. Respondent has no rights or legitimate interests in the disputed domain name.

                                          i.    Respondent is not now known by and has never used and/or traded under the name “TOMS” or “TOMSCHASSURES.”

                                         ii.    Respondent is using the disputed domain name to offer counterfeit TOMS goods.

    1. Respondent has registered and is using the disputed domain name in bad faith.

                                          i.    Respondent registered and uses the disputed domain name to disrupt the business of Complainant and Complainant’s exclusive licensee.

                                         ii.    Respondent is attempting to divert business and customers from Complainant’s exclusive licensee to Respondent’s website.

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <tomschaussures.com> domain name is confusingly similar to Complainant’s TOMS mark.

2.    Respondent does not have any rights or legitimate interests in the < <tomschaussures.com> domain name.

3.    Respondent registered or used the <tomschaussures.com> 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 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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it is the owner of several U.S. Federal Trademark registrations and/or applications for the TOMS mark for use in connection with the sale of a variety of goods, but most commonly and prominently men’s, women’s, and children’s shoes. Complainant argues that its exclusive licensee, TOMS Shoes, Inc., operates as a company under the name TOMS Shoes, Inc. Complainant contends that its licensee has sold such shoes through its primary website located at <toms.com>. Complainant argues and shows that it owns trademark registrations with the USPTO for the TOMS mark (e.g., Reg. No. 3,353,902, registered Dec. 11, 2007). The Panel notes that although Respondent appears to reside in China, Policy ¶ 4(a)(i) only requires that Complainant establish its rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel determines that Complainant’s registration with the USPTO is sufficient to establish its rights in the TOMS mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

Complainant argues that Respondent’s <tomschaussures.com> domain name is identical to Complainant’s TOMS mark, given that the second element is merely the descriptor, “chassures,” which is the French word for “shoes”, and the connotation and the commercial impression thereof is identical. The Panel notes that the word “chassures” is descriptive of Complainant’s shoe business and the products Complainant markets in connection with this business. Therefore, the Panel finds that the addition of a descriptive term does not differentiate Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See 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). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The Panel finds that the addition of a gTLD does not eliminate confusing similarity between Respondent’s disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i). See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Thus, the Panel concludes that Respondent’s <tomschaussures.com> domain name is confusingly similar to Complainant’s TOMS mark under Policy ¶ 4(a)(i).

 

Rights 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 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 is not now known by and has never used and/or traded under the name “TOMS” or “TOMSCHASSURES.” The Panel notes that the WHOIS information identifies “zhang yanping / hangyanping z” as the registrant of the disputed domain name. See Complainant’s Exhibit C. The Panel also notes that Respondent does not submit any evidence that it is commonly known by the disputed domain name. Accordingly, the Panel determines 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 asserts that Respondent is using the disputed domain name to offer counterfeit TOMS goods. See Complainant’s Exhibit D. Complainant contends that Respondent operates as a counterfeiter whose purpose is to sell counterfeit TOMS goods to unsuspecting consumers. The Panel finds that Respondent’s use of the disputed domain name to offer counterfeit TOMS goods is neither a bona fide offering of good and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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 nor a legitimate noncommercial or fair use of a disputed domain name).

 

Complainant also asserts that Respondent is using the disputed domain name to operate a phishing scheme. Complainant contends that Respondent’s intent is to steal and use consumers’ credit card numbers. The Panel finds that Respondent’s use of the disputed domain name to phish for consumers’ credit card numbers is neither a bona fide offering of good and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent registered the disputed domain name to disrupt the business of Complainant and Complainant’s exclusive licensee. Complainant argues that Respondent is selling counterfeit TOMS goods on the website linking to the disputed domain name. See Complainant’s Exhibit D. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business, showing bad faith use and registration under Policy ¶ 4(b)(iii). See 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 contends that Respondent is attempting to divert business and customers from Complainant’s exclusive licensee to Respondent’s website. Complainant asserts that Respondent is attempting to attract Internet traffic to Respondent’s website and to create actual confusion with Complainant’s mark. Complainant argues that customers who are already aware of Complainant’s marks and business could inadvertently end up at Respondent’s website. Complainant contends that if customers saw precisely the same type of goods being offered at that site, customers would be confused as to the source of those goods. The Panel finds that Respondent’s use of the disputed domain name to offer counterfeit goods demonstrates bad faith use and registration 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).

 

Complainant contends that Respondent’s registration and use of the <tomschaussures.com> domain name was predicated at least partially on Respondent’s intent to operate a phishing scheme via the disputed domain name. Complainant asserts that Respondent attempts to gain credit card numbers incidental to its sale of counterfeit goods. Panels have consistently held that attempting to operate a phishing scheme that attempts the fraudulent acquisition of credit card and financial date is evidence of bad faith. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Therefore, the Panel finds that Respondent registered and uses the <tomschaussures.com> domain name in bad faith pursuant to 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 <tomschaussures.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  February 11, 2013

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page