Mycoskie, LLC v. cai hua
Claim Number: FA1302001484632
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is cai hua (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tomsshoessaleoutlet.com>, registered with GODADDY.COM, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2013; the National Arbitration Forum received payment on February 15, 2013.
On February 12, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <tomsshoessaleoutlet.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 February 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@tomsshoessaleoutlet.com. Also on February 19, 2013, 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 Marck 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Respondent is not known by the domain name.
ii. The only website Respondent has ever located at the domain name <tomsshoessaleoutlet.com> offers counterfeit TOMS goods.
i. Respondent has registered the domain name <tomsshoessaleoutlet.com> to disrupt the business of Complainant and Complainant’s exclusive licensee by attracting Internet traffic to Respondent’s website and by intentionally creating actual confusion with Complainant’s marks.
ii. Respondent is attempting to divert business and customers from Complainant’s exclusive licensee to Respondent’s website.
iii. Respondent registered the domain name having actual knowledge of Complainant’s preexisting trademark rights in the TOMS trademarks and the use of the same in connection with the sale of shoes.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its TOMS and TOMS SHOES marks.
2. Respondent’s <tomsshoesalesoutlet.com> domain name is confusingly similar to Complainant’s marks.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used 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, Mycoskie, LLC, argues that it is the owner of several U.S. federal trademark registrations and/or applications for the term TOMS for use in connection with a sale of a variety of goods, but most commonly and most prominently, men’s, women’s, and children’s shoes. Complainant claims that its exclusive licensee, TOMS Shoes, Inc., operates as a company under the name TOMS Shoes, Inc. and has done so since at least June 16, 2006. Complainant asserts that its exclusive licensee has sold such shoes through its primary website located at <tomsshoes.com>. Complainant contends that it is the owner of trademark registrations with the USPTO for the TOMS mark (e.g., Reg. No. 887,771, registered December 11, 2007) and for the TOMS SHOES FOR TOMORROW mark (Reg. No. 3,327,341, registered October 30, 2007). See Complainant’s Exhibit B. Accordingly, the Panel concludes that Complainant’s registration of the TOMS and TOMS SHOES FOR TOMORROW marks satisfies Policy ¶ 4(a)(i), demonstrating Complainant’s rights in the marks. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <tomsshoessaleoutlet.com> domain name is both identical and confusingly similar to a trademark or service mark in which Complainant has rights. Complainant claims that the first portion of Respondent’s second-level domain, “tomsshoes”, is identical to Complainant’s federally-protected TOMS and TOMS SHOES marks, and the second part, “saleoutlet”, is merely a generic descriptor. The Panel finds that the addition of a generic word does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel notes that Respondent removes the space between the terms “TOMS” and “SHOES” in Complainant’s TOMS SHOES FOR TOMORROW mark and adds the generic top-level domain (“gTLD”) “.com.” In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel found that the elimination of the space between words, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel holds that Respondent’s <tomsshoessaleoutlet.com> domain name is confusingly similar to Complainant’s TOMS and TOMS SHOES FOR TOMORROW mark under Policy ¶ 4(a)(i).
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 known by the domain name. Complainant argues that Respondent is not now known by and has never used and/or traded under the name TOMS or TOMSSHOESSALEOUTLET. The Panel notes that the WHOIS information for the disputed domain name lists “cai hua” as the registrant. See Complainant’s Exhibit C. The Panel finds 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 argues that the only website Respondent has ever located at the domain name <tomsshoessaleoutlet.com> offers counterfeit TOMS goods. See Complainant’s Exhibit D. The Panel determines that Respondent’s offering of counterfeit TOMS shoes is not a bona fide offering of goods 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 or a legitimate noncommercial or fair use of a disputed domain name).
Complainant argues that Respondent has registered the domain name <tomsshoessaleoutlet.com> to disrupt the business of Complainant and Complainant’s exclusive licensee by attracting Internet traffic to Respondent’s website and by intentionally creating actual confusion with Complainant’s marks. The Panel notes that the website located at Respondent’s disputed domain name sells counterfeit TOMS shoes. See Complainant’s Exhibit D. The Panel finds that Respondent has registered the disputed domain name to sell counterfeit goods to disrupt Complainant’s business. The Panel holds that Respondent has registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Complainant asserts that Respondent is attempting to divert business and customers from Complainant’s exclusive licensee to Respondent’s website. The Panel notes that Respondent is using the disputed domain name to sell counterfeit TOMS shoes. See Complainant’s Exhibit D. Complainant claims that customers who are already aware of Complainant’s trademarks and Complainant’s exclusive licensee’s business could inadvertently end up at Respondent’s website by typing in the <tomsshoessaleoutlet.com> domain name or by typing “TOMS SHOES SALE” or “TOMS SHOES OUTLET” into a search engine and thereafter being mistakenly directed to Respondent’s website. Complainant argues that if customers saw the same type of goods being offered at Respondent’s website, such customers would certainly be confused as to the source of those goods. The Panel finds that Respondent’s use of the disputed domain name to divert customers from Complainant’s business for its own commercial gain constitutes bad faith use and registration under Policy ¶ 4(b)(iv). 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).
Complainant claims Respondent registered the domain name having actual knowledge of Complainant’s preexisting trademark rights in the TOMS trademarks and the use of the same in connection with the sale of shoes. The Panel finds that, due to Respondent’s sale of counterfeit goods similar to Complainant’s goods, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tomsshoessaleoutlet.com> domain name be TRANSFERRED from Respondent to Complainant .
Tyrus R. Atkinson, Jr., Panelist
Dated: April 8, 2013
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