C. & J. Clark International Limited v. zhu yuan
Claim Number: FA1302001486918
Complainant is C. & J. Clark International Limited (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is zhu yuan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clarksuk.us>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2013; the National Arbitration Forum received a hard copy on March 8, 2013.
On February 26, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <clarksuk.us> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 13, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 19, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy "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 usTLD Policy, usTLD 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
Complainant owns a footwear company that began doing business in 1825 under the trademark CLARKS. Complainant’s footwear is world renowned. Complainant manufactures and distributes its products across the globe, which includes shoes and specialty footwear for men, women, and children. Complainant has used the CLARKS trademark in the United States since 1947, and owns a trademark registration for the CLARKS mark through the United States Patent and Trademark Office (“USPTO”) (Reg. No. 691,307 registered January 12, 1960). See Annex 5. Complainant also owns trademark registrations for its CLARKS mark with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 176,114 registered December 28, 1995). See Annex 6. Complainant’s products are known throughout the world, and its global sales exceeded $1.9 billion. Complainant’s continuous and substantial use of the CLARKS mark and the large amount of resources it has spent promoting the CLARKS name has resulted in significant goodwill in the mark, and the name represents a high quality product and service to consumers.
Respondent registered the <clarksuk.us> domain name, and initially used the resolving website to market counterfeit products under the CLARKS name before removing the webpage. Complainant believes that the website was moved to another, under the <clarksuk.net> domain name, which is the subject of a concurrent ICANN Complaint. The products being sold were not made by Complainant and were of poor quality and different in design and construction from true CLARKS shoes, yet it used the same logo that Complainant designed and registered with the USPTO. Respondent used Complainant’s CLARK mark and logo to attract customers to its website and sell them the counterfeit shoes. The <clarksuk.us> domain name is confusingly similar to Complainant’s CLARKS mark. Respondent has no rights or legitimate interests in the <clarksuk.us> domain name and cannot claim any relationship to Complainant that would allow it to register the CLARKS mark in a domain name. Respondent registered and is using the <clarksuk.us> domain name in bad faith, as shown by its attempt to create confusion with Complainant’s mark in order to make a commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, C. & J. Clark International Limited, owns a footwear company that began doing business in 1825 under the trademark CLARKS. Complainant manufactures and distributes its products across the globe. Complainant has used the CLARKS trademark in the United States since 1947, and owns a trademark registration for the CLARKS mark through the United States Patent and Trademark Office (“USPTO”) (Reg. No. 691,307 registered January 12, 1960). Complainant also owns trademark registrations for its CLARKS mark with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 176,114 registered December 28, 1995).
Respondent, zhu yuan, registered the <clarksuk.us> domain name on August 18, 2012, and initially used the resolving website to market counterfeit products under the CLARKS name before removing the webpage.
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 or 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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant owns rights in the CLARKS mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations in the United States and in China. See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
The <clarksuk.us> domain name is confusingly similar to Complainant’s CLARKS mark for the purposes of Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant’s entire mark, adding only the geographic initials “uk,” to indicate the United Kingdom, and the country-code top-level domain (“ccTLD”) “.us.” See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI mark).
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).
Complainant asserts that Respondent is not associated with Complainant’s business in any way. No evidence supports a finding that Respondent owns the mark that would allow it to register the <clarksuk.us> domain name pursuant to Policy ¶ 4(a)(ii). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
The WHOIS information associated with the disputed domain name indicates “zhu yuan” is the registrant. The panel in Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003), held that considering the WHOIS information for the disputed domain name, it can be inferred that Respondent is not commonly known by the domain name. The Panel finds that Respondent is not commonly known by the <clarksuk.us> domain name under Policy ¶ 4(c)(ii) and thus lacks rights or legitimate interests in the disputed domain name.
Respondent’s use of the <clarksuk.us> domain name to sell products that purport to be Complainant’s under the CLARKS mark was 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 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).
Complainant makes the argument that Respondent used the <clarksuk.us> domain name to create confusion among consumers as to Complainant’s affiliation with the disputed domain name due to the sale of counterfeit shoes at the resolving website. Complainant contends that Respondent’s bad faith registration and use is demonstrated by Respondent’s use of the domain name to confuse Internet users and attract them to the resolving website, with the goal of making a financial gain. Respondent’s use of the confusingly similar <clarksuk.us> domain name to attract Internet users to the website in order to make a profit is evidence of Respondent’s bad faith registration and use 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 having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clarksuk.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 22, 2013
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