Mycoskie, LLC v. xuejian chen / chen xuejian
Claim Number: FA1302001484642
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is xuejian chen / chen xuejian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheaptomssales.com>, registered with HiChina Zhicheng Technology Ltd.
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.
Darryl C. Wilson, as Panelist.
On February 15, 2013, HiChina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <cheaptomssales.com> domain name is registered with HiChina Zhicheng Technology Ltd. and that Respondent is the current registrant of the names. HiChina Zhicheng Technology Ltd. has verified that Respondent is bound by the HiChina Zhicheng Technology Ltd. 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 22, 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 14, 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@cheaptomssales.com. Also on February 22, 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 March 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
A. Complainant
i. Respondent is not known by the domain name.
ii. Respondent operates as a counterfeiter and/or phishing site operator, whose sole purpose is to either sell counterfeit TOMS goods to unsuspecting consumers and/or to steal and use consumers’ credit card numbers.
i. Respondent has registered the domain name <cheaptomssales.com> to disrupt the business of Complainant.
It is clear that Respondent is attempting to divert business and customers from Complainant’s exclusive licensee to Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Mycoskie, LLC who list its address as Santa Monica, CA, USA. Complainant owns USA federal trademark registrations for the mark TOMS and associated marks which it uses for shoes and clothing goods. Complainant has through its business structure used the TOMS mark continuously since at least 2006. Complainant asserts that its exclusive licensee has sold shoes through its primary website located at <tomsshoes.com>.
Respondent is xuejian chen/chen xuejian who list its address as Fuzhou Fujian, China. Respondent’s registrar list its address as Beijing, China. Respondent registered the disputed domain name on November 8, 2012.
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.”).
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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.
Complainant, Mycoskie, LLC, contends that it 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 argues that its exclusive licensee, has used the TOMS trademarks since at least April 2006 in connection with the sale of men’s, women’s, and children’s shoes. Complainant asserts that its exclusive licensee has sold such shoes through its primary website located at <tomsshoes.com>. Complainant claims that it is the owner of trademark registrations with the USPTO for the TOMS mark (e.g., Reg. No. 3,353,902, 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. The Panel notes that although Respondent appears to reside in China, Complainant does not need to register its mark in the country that Respondent operates in 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 demonstrated its rights in the TOMS mark through its registration with the USPTO under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant asserts that Respondent’s <cheaptomssales.com> domain name is identical to a trademark or service mark in which Complainant has rights and that the addition of the words “cheap” and “sales,” are merely generic descriptors. The Panel finds that the addition of generic descriptors does not distinguish Respondent’s domain name from Complainant’s mark 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 adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The Panel finds that Respondent’s addition of a gTLD does not differentiate Respondent’s domain from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). The Panel finds that Respondent’s <cheaptomssales.com> domain name is confusingly similar to Complainant’s TOMS mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent is not now known by and has never used and/or traded under the name “TOMS” or “CHEAPTOMSSALES” names. The Panel notes that the WHOIS information lists “xuejian chen / chen xuejian” as the registrant of the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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).
Complainant claims that Respondent operates as a counterfeiter and/or phishing site operator, whose sole purpose is to either sell counterfeit TOMS goods to unsuspecting consumers and/or to steal and use consumers’ credit card numbers. The Panel notes that Respondent is using the website to host a blog site that features blog posts about TOMS shoes. See Complainant’s Exhibit D. The Panel finds that Respondent’s use of the disputed domain name to host a blog page is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has registered the domain name <cheaptomssales.com> to disrupt the business of Complainant. Complainant further argues that Respondent is using the disputed domain name to either sell counterfeit TOMS goods to unsuspecting consumers and/or to steal and use consumers’ credit card numbers. The Panel notes that Respondent is using the website to host a blog site that features blog posts about TOMS shoes. See Complainant’s Exhibit D. The Panel finds that Respondent registered the disputed domain name with the intent to disrupt Complainant’s business under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Complainant argues that customers who are already aware of Complainant’s trademarks and Complainant’s exclusive licensee’s business could inadvertently end up (and likely have) at Respondent’s website by typing in the <cheaptomssales.com> or by typing “TOMS CHEAP SALES” or “CHEAP TOMS SALES” into a search engine and thereafter being mistakenly directed to Respondent’s website. The Panel finds that Respondent’s use of the disputed domain name to divert business from Complainant’s business demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <cheaptomssales.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 8, 2013
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