Mycoskie, LLC v. HuangZhenZhen / ZhenZhen Huang
Claim Number: FA1301001480898
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is HuangZhenZhen / ZhenZhen Huang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tomscheapshoes.com>, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2013; the National Arbitration Forum received payment on January 28, 2013. The Complaint was submitted in both Chinese and English.
On January 20, 2013, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <tomscheapshoes.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. 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 January 30, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 19, 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@tomscheapshoes.com. Also on January 30, 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 February 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
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.
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 issues 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, through its exclusive licensee, sells men’s, women’s, and children’s shoes under the TOMS mark.
2. Complainant has registered the TOMS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,353,902 registered December 11, 2007).
3. Respondent is not commonly known by the <tomscheapshoes.com> domain name.
4. The <tomscheapshoes.com> domain name resolves to a website that sells shoes which appear to be counterfeit versions of Complainant’s TOMS-branded shoes.
5. Respondent may also use the disputed domain name to operate a phishing site with intent to steal and use consumers’ credit card information.
6. Respondent registered the <tomscheapshoes.com> domain name with actual knowledge of Complainant’s preexisting trademarks rights in the TOMS mark.
7. Respondent registered the <tomscheapshoes.com> domain name to disrupt Complainant’s business by attracting Internet traffic to Respondent’s website and by intentionally creating actual confusion with Complainant’s marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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 presents its trademark registrations with the USPTO for the TOMS mark (e.g., Reg. No. 3,353,902 registered December 11, 2007) to support its claim of rights in the mark under Policy ¶ 4(a)(i). The Panel holds that Complainant’s trademark registrations with the USPTO are sufficient to establish rights in the TOMS mark under Policy ¶ 4(a)(i), despite the fact that Complainant has not presented evidence of registration in the country in which Respondent operates. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”); see also 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).
Complainant alleges that the <tomscheapshoes.com> domain name is confusingly similar to its TOMS mark for the purposes of Policy ¶ 4(a)(i). Complainant notes that the disputed domain name wholly includes Complainant’s TOMS mark, adding only the terms “cheap” and “shoes,” as wells as the generic top-level domain (“gTLD”) “.com.” The Panel considers the phrase “cheap shoes” to be descriptive of Complainant’s business, as Complainant uses the TOMS mark in connection with the sale of shoes. The Panel finds that Respondent’s inclusions of terms which describe Complainant’s business do not distinguish the disputed domain 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). Moreover, the Panel finds that the affixation of a gTLD does not distinguish the disputed domain under Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel concludes that Respondent’s <tomscheapshoes.com> domain name is confusingly similar to Complainant’s TOMS mark for the purposes of Policy ¶ 4(a)(i).
Complainant has proven this element.
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 asserts that Respondent is not commonly known by the <tomscheapshoes.com> domain name within the meaning of Policy ¶ 4(c)(ii). The Panel notes that the WHOIS information on record identifies the domain name registrant as “HuangZhenZhen / ZhenZhen Huang,” which the Panel finds to bear little resemblance to the <tomscheapshoes.com> domain name. Moreover, because Respondent has failed to submit a Response, the Panel finds that the record is devoid of any evidence tending to show that Respondent is in fact commonly known by the disputed domain name. In light of the foregoing, the Panel holds that Respondent is not commonly known by the <tomscheapshoes.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also asserts that Respondent’s use of the <tomscheapshoes.com> domain name coincides with neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant claims that the <tomscheapshoes.com> domain name resolves to a website that sells shoes which appear to be counterfeit versions of Complainant’s TOMS-branded shoes. Additionally, Complainant posits that Respondent also use the disputed domain name to operate a phishing site in an attempt to steal and use consumers’ credit card information. The Panel notes that past panels have not considered either use to comply with the mandates of Policy ¶ 4(c)(i) or 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 or a legitimate noncommercial or fair use of a disputed domain name); 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).”). The Panel finds that Respondent’s use of the <tomscheapshoes.com> domain name does not coincide with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant contends that Respondent registered the <tomscheapshoes.com> domain name to disrupt Complainant’s business by attracting Internet traffic to Respondent’s website and by intentionally creating actual confusion with Complainant’s marks. Complainant argues that by offering and advertising precisely the same kind of goods as Complainant offers under its TOMS mark, Respondent is attempting to wrongfully divert customers searching for Complainant to Respondent’s website. The Panel finds that Respondent’s website competes with Complainant’s business, as Respondent uses the disputed domain name to offer counterfeit versions of Complainant’s products. The Panel further finds that Respondent’s use of a confusingly similar domain name to attract consumers to its competing website disrupts Complainant’s business in bad faith. 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). Accordingly, the Panel holds that Respondent has registered and used the <tomscheapshoes.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
The Panel also finds that Respondent’s registration of a confusingly similar domain name in order to sell counterfeit versions of Complainant’s products evidences attraction for commercial gain. Complainant notes that consumers who are already aware of Complainant’s TOMS-branded products inadvertently end up at Respondent’s site while searching for Complainant’s site. Complainant posits that these consumers, who are already seeking shoes, would be further confused by Respondent’s offering of what purport to be Complainant’s products, but are not. The Panel finds that Respondent has intentionally sought to create this confusion, with the goal of realizing a commercial gain through the sale of its counterfeit products. The Panel holds that this scenario illustrates registration and use of the <tomscheapshoes.com> domain name in bad faith pursuant to 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 alleges that Respondent registered the <tomscheapshoes.com> domain name with actual knowledge of Complainant’s preexisting trademarks rights in the TOMS mark, given Respondent’s sale of what purport to be Complainant’s products at the disputed domain name, as well as Respondent’s registration of a domain name that wholly includes Complainant’s federally-registered TOMS mark. While panels have generally not considered constructive notice to be sufficient to support a finding of bad faith, the Panel here finds that Respondent had actual knowledge of Complainant's rights in the TOMS mark, and therefore determines that Respondent registered the <tomscheapshoes.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent also alleges that Respondent’s use the disputed domain name to operate a phishing site, either in place of or in addition to its sale of counterfeit goods. The Panel finds sufficient evidence that Respondent has used the disputed domain to trick visitors into divulging credit card or other personal information, and the Panel finds that Respondent has used the <tomscheapshoes.com> domain name in connection with a phishing operation. The Panel further finds that such operation constitutes registration and use of the <tomscheapshoes.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant has proven this element.
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 <tomscheapshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 7, 2013
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