Mycoskie, LLC v. HuangXiuYing / XiuYing Huang
Claim Number: FA1302001484633
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is HuangXiuYing / XiuYing Huang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheaptomssale.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 February 11, 2013; the National Arbitration Forum received payment on February 15, 2013. The Complaint was submitted in both Chinese and English.
On February 15, 2013, BIZCN.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <cheaptomssale.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 February 25, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 18, 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@cheaptomssale.com. Also on February 25, 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 April 1, 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.
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.
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 will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Complainant, Mycoskie, LLC, has an exclusive licensee, TOMS Shoes, Inc., which operates as a company under the name TOMS Shoes, Inc., and has done so since at least June 16, 2006. Complainant is the owner of several U.S. 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.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TOMS mark (e.g., Reg. No. 3,556,093 registered Jan. 20, 2009) and for the TOMS & Design mark (Reg. No. 3,765,503 registered Mar. 23, 2010).
iii. Respondent registered the <cheaptomssale.com> domain name on February 29, 2012.
iv. The middle portion of the disputed domain name is identical to complainant’s TOMS mark, and the first and third portions are merely generic descriptors (“cheap” and “sale”).
i. Respondent has made no bona fide use of the <chaussurestoms.com> domain name. Respondent’s use appears to be a willful attempt to trade on the goodwill and reputation of Complainant’s TOMS products. Additionally, Respondent has only ever used the disputed domain name to offer counterfeit TOMS goods.
ii. Respondent has not been commonly known by the domain name.
iii. Respondent has not made a legitimate or fair use of the domain name, but is operating as a counterfeiter and/or phishing site operator.
i. Respondent has registered and is using the <chaussurestoms.com> domain name to disrupt the business of Complainant, and to attract Internet traffic to Respondent’s Website by intentionally creating confusion with Complainant’s marks.
ii. By offering and advertising exactly the same kind of goods as Complainant sells under its protected TOMS mark, it is clear that Respondent is attempting to divert business and customers from Complainant by creating confusion with Complainant’s TOMS mark.
iii. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TOMS mark and Complainant’s use of the mark in connection with the sale of shoes.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds 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 claims rights in the TOMS trademark based on its registration of the TOMS (e.g., Reg. No. 3,556,093 registered Jan. 20, 2009) and TOMS & Design (Reg. No. 3,765,503 registered Mar. 23, 2010) marks with the USPTO. Previous panels have found that a complainant’s registration of a mark with a federal trademark authority is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). The UDRP precedent has established that a complainant does not need to own a trademark registration in the country of a respondent in order to establish rights in its mark under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant has established rights in the TOMS and TOMS & Design marks for the purposes of Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <cheaptomssale.com> domain name is confusingly similar to Complainant’s TOMS trademark pursuant to Policy ¶ 4(a)(i). Complainant notes that the disputed domain name uses Complainant’s TOMS mark in its entirety, with only the addition of the generic terms “cheap” and “sale.” Because past panels have found that the addition of non-distinctive, generic terms are insufficient to avoid a finding of confusing similarity, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Previous panels have considered generic top-level domains (“gTLDs”) irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complaiant 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 argues that Respondent is not commonly known by the disputed domain name, and has not demonstrated rights or legitimate interests in the domain under Policy ¶ 4(c)(ii). The WHOIS information for the <cheaptomssale.com> domain name lists “HuangXiuYing / XiuYing Huang” as the registrant. Previous panels have found nominally unsupportive WHOIS information to be strong evidence that a respondent is not commonly known by a disputed domain name. 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). The Panel agrees and finds that Respondent has not established rights or legitimate interests in the <cheaptomssale.com> domain name under Policy ¶ 4(c)(ii).
Complainant also claims that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, and has not made a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant contends that Respondent is using the <cheaptomssale.com> domain name to sell counterfeit versions of Complainant’s TOMS products or to steal and use consumers’ credit card information. Previous panels have found that the sale of counterfeit versions of Complainant’s products is evidence of a lack of a bona fide offering of goods or services as well as a lack of a legitimate noncommercial or fair use. The panel agrees and finds that Respondent has not demonstrated rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business). The Panel finds that Respondent has used the disputed domain name in an attempt to steal and use consumers’ credit card information, a practice known as “phishing.” See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (defining “phishing” as fooling “Internet users into sharing personal financial data so that identities can be stolen, fraudulent bills are run up, and spam e-mail is sent”). Since the Panel determines that Respondent has engaged in phishing activity, the Panel holds that Respondent lacks rights and legitimate interests in the <cheaptomssale.com> domain name on that basis as well. 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).
Complainant has proven this element.
Complainant alleges that Respondent has registered and used the <cheaptomssale.com> domain name in bad faith to disrupt the business of Complainant pursuant to Policy ¶ 4(b)(iii), by selling counterfeit products at a domain name that is confusingly similar to Complainant’s TOMS trademark. Previous panels have found that the sale of counterfeit products is disruptive and is evidence of bad faith under 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). Therefore the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant similarly contends that Respondent registered the disputed domain name to attract Internet users to its website by creating confusion with Complainant’s mark, evidencing bad faith registration and use under Policy ¶ 4(b)(iv). Based on precedent from past panels acknowledging this type of usage as bad faith, the Panel finds that Respondent is using the disputed domain name to commercially benefit from confusion with Complainant’s mark, and further finds such use to be evidence of bad faith 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 also alleges that Respondent may be using the disputed domain name for the purposes of fraudulently acquiring users’ personal and financial information, a practice known as “phishing.” The Panel finds the allegation valid and concludes that this phishing activity is evidence of bad faith pursuant to Policy ¶ 4(a)(iii), based on the holdings of past panels. See 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 further contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TOMS mark and Complainant’s use of the mark in connection with the sale of shoes. Complainant cites Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s TOMS-branded shoes as evidence that Respondent had prior knowledge of Complainant and its rights. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the <cheaptomssale.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice 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).
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 <cheaptomssale.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 4, 2013
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