Carhartt, Inc. v. Trendmecca Inc.
Claim Number: FA1301001480101
Complainant is Carhartt, Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington, D.C., USA. Respondent is Trendmecca Inc. (“Respondent”), Nonhyeon-dong Gangnam-gu, South Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <carharttkorea.com>, <carharttmall.com>, and <carhartt-korea.com>, registered with GABIA, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2013; the National Arbitration Forum received payment on January 15, 2013. The Complaint was submitted in both Korean and English.
On January 14, 2013, GABIA, INC. confirmed by e-mail to the National Arbitration Forum that the <carharttkorea.com>, <carharttmall.com>, and <carhartt-korea.com> domain names are registered with GABIA, INC. and that Respondent is the current registrant of the names. GABIA, INC. has verified that Respondent is bound by the GABIA, 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 18, 2013, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of February 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@carharttkorea.com, postmaster@carharttmall.com, and postmaster@carhartt-korea.com. Also on January 18, 2013, the Korean 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 February 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.
Panel notes that the Registration Agreement is in Korean and so the language of the proceedings in Korean. Nevertheless, pursuant to Rule 11(a), Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English. Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and rules and principles of law that Panel deemed applicable, without the benefit of a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in CARHARTT and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has used the trademark CARHARTT in connection with its clothing goods since 1889.
2. Complainant owns, inter alia, United States Trademark Reg. No. 1,841,700 registered June 28, 1994 for the word mark CARHARTT.
3. The disputed domain names were registered as the following dates - <carharttkorea.com> and <carharttmall.com> on September 21, 2012, and <carhartt-korea.com> on September 24, 2012.
4. The domain name <carhartt-korea.com> is not in use. The <carharttkorea.com> and <carharttmall.com> domain names resolve to a website not associated with Complainant that purports to be an online store for Complainant’s products in Korea and mimics the style of Complainant’s own website.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.”).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panel is also satisfied that the disputed domain names are confusingly similar to Complainant’s trademark. The disputed domain names each take the trademark in its entirety and add other non-distinctive elements such as minor punctuation, the gTLD, “.com”, the country name “Korea” or the descriptive term “mall”, none being added matter which distinguish the domain names from the trademark in any significant way so as to avoid confusion (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see alsoTicketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) finding <indiaticketmaster.com> confusingly similar to complainant’s TICKETMASTER mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of each of the disputed domain names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain names for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “Trendmecca Inc.” and so there is no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization. There is no suggestion that the goods offered for sale by Respondent (see further below) are Complainant’s goods.
There is no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute. On the evidence as presented, the domain name <carhartt-korea.com> has not been used at all, nor is there any evidence of its imminent bona fide use. The <carharttkorea.com> and <carharttmall.com> domain names have been used but resolve to a website not associated with Complainant that mimics the style of Complainant’s website and purports to be an online store for CARHARTT-branded products in Korea. Evidence of that matter takes the form of claims on the resolving website such as “CARHARTT USA” and “Since 1889”, neither being true statements relative to the website in question. In addition, the resolving website illegitimately uses Complainant registered logo, proof of which is provided by way of USPTO registration certificates. In short, the use is not bona fide in any sense (see, for example, Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) where panel found respondent’s attempt to pass itself of as complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that case is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy in respect of all three disputed domain names.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain names in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Complainant submits that in relation to the <carharttkorea.com> and <carharttmall.com> domain names (those in use), Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor pursuant to paragraph 4(b)(iii) above.
Interpretation of the word “competitor” in paragraph 4(b)(iii) of the Policy has engaged the attention of many panels and remains controversial but in this instance Respondent clearly appears to be offering items of clothing for sale and so it can sensibly be labeled a competitor of Complainant even if the resolving website were to be something of a sham. Panel accordingly accepts Complainant’s submission and finds registration and use in bad faith in respect of both those domain names.
For the avoidance of any doubt, Panel would have also found that in relation to those two names, Respondent’s conduct fell squarely under paragraph 4(b)(iv) above in that Panel would have found it to be more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark.
The remaining domain name <carhartt-korea.com> is not in use. Nevertheless, given (i) the evidence showing use of Complainant’s trademark since 1889, and (ii) the inherently distinctive character of the word (or rare family name) CARHARTT, Panel finds that (a) it is more likely than not the domain name was registered in bad faith given the bad faith use of the companion domain names registered almost contemporaneously, and (b) the domain name was also “used” in bad faith following the principle of so-called “passive holding” first expressed in the case of Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000‑0003 and applied to this case for the same reasons given then, namely, that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.
Panel accordingly finds bad faith registration and bad faith use of all three disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carharttkorea.com>, <carharttmall.com>, and <carhartt-korea.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: February 20, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page