Mycoskie, LL v. William Kelly
Claim Number: FA1302001488105
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is William Kelly (“Respondent”), Guam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tomsflats.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 28, 2013; the National Arbitration Forum received payment March 8, 2013.
On March 11, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tomsflats.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@tomsflats.com. Also on March 13, 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 April 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. Respondent operates as a counterfeiter, whose sole purpose is to sell counterfeit TOMS goods to unsuspecting consumers.
iii. Respondent operates as a phishing site, whose sole purpose is to steal and use consumers’ credit card numbers.
i. Respondent registered the domain name <tomsflats.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. It is clear that 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.
Complainant established rights in the mark contained in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s mark.
The Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel t 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.”).
Identical to or Confusingly Similar
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 the sale of a variety of goods, but most commonly and most prominently, men’s, women’s, and children’s shoes. Complainant contends 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, when the company was formed under that name. Complainant claims that its exclusive licensee has sold such shoes through its primary website located at <tomsshoes.com> since at least May 7, 2006, as well as its recently acquired <toms.com> website. Complainant argues that it is the owner of trademark registrations with the USPTO for the TOMS mark (e.g., Reg. No. 877,771, 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. The Panel notes that although Respondent appears to reside in Guam, the Panel finds that it is irrelevant whether Complainant registered its trademark in the country of Respondent’s business under Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel finds that Complainant’s registration of the TOMS mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <tomsflats.com> domain name is confusingly similar to Complainant’s TOMS mark given that the first portion of Respondent’s second level domain is identical to Complainant’s federally protected TOMS marks, and the second part is the generic “flats” term, the connotation and commercial impression thereof is identical. The Panel determines that the addition of a generic term does not negate 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 adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The Panel finds that the addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. 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”). Thus, the Panel finds that Respondent’s <tomsflats.com> domain name is confusingly similar to Complainant’s TOMS mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to and Legitimate Interests
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 to 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 has no rights or legitimate interests in the domain name <tomsflats.com>. Complainant contends 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 “TOMS FLATS” names. The Panel notes that the WHOIS information for the disputed domain name lists “William Kelly” as the registrant. See Complainant’s Exhibit C. The Panel determines 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, whose sole purpose is to sell counterfeit TOMS goods to unsuspecting consumers. The Panel notes that Respondent’s disputed domain name resolves to a website that sells counterfeit TOMS products. See Complainant’s Exhibit D. The Panel finds that Respondent’s use of the disputed domain name to sell counterfeit TOMS goods is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).
Complainant argues that Respondent operates as a phishing site, whose sole purpose is to steal and use consumers’ credit card numbers. The Panel notes that Respondent’s disputed domain name resolves to a website that features a “Contact Us” webpage, asking consumer Policy ¶ 4(a)(iii). The Panel finds that Respondent’s use of the disputed domain name to phish for consumers’ personal information 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 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).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent registered the domain name <tomsflats.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 Respondent’s disputed domain name resolves to a website that sells counterfeit TOMS products. See Complainant’s Exhibit D. The Panel finds that Respondent’s use of the disputed domain to sell counterfeit TOMS products disrupts Complainant’s business under Policy ¶ 4(b)(iii), evidencing bad faith use and registration. 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 argues that it is clear that Respondent is attempting to divert business and customers from Complainant’s exclusive licensee to Respondent’s website. The Panel notes that Respondent’s disputed domain name resolves to a website that sells counterfeit TOMS products. See Complainant’s Exhibit D. Complainant asserts 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 <tomsflats.com> domain name or by typing “TOMS” or “TOMS FLATS” into a search engine and thereafter being mistakenly directed to Respondent’s website. Complainant contends that when customers see precisely the same type of goods being offered at that site, and in fact counterfeit versions of Complainant’s licensee’s own goods, such customers, already seeking shoes, certainly would be confused as to the source of those goods. The Panel notes that Respondent’s sale of counterfeit goods is for Respondent’s own commercial gain. The Panel finds that Respondent’s use of the disputed domain to sell counterfeit TOMS products diverts Internet traffic away from Complainant, demonstrating bad faith use and registration under 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 argues that 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 notes that Respondent’s disputed domain name resolves to a website that sells counterfeit TOMS products. See Complainant’s Exhibit D. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tomsflats.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 23, 2013.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page