C. & J. Clark International Limited v. PrivacyProtect.org / Domain Admin
Claim Number: FA1303001488318
Complainant is C. & J. Clark International Limited (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clarksuk.net>, registered with CLOUD GROUP LIMITED.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2013; the National Arbitration Forum received payment on March 1, 2013.
On March 5, 2013, CLOUD GROUP LIMITED confirmed by e-mail to the National Arbitration Forum that the <clarksuk.net> domain name is registered with CLOUD GROUP LIMITED and that Respondent is the current registrant of the name. CLOUD GROUP LIMITED has verified that Respondent is bound by the CLOUD GROUP LIMITED 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 March 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@clarksuk.net. Also on March 8, 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 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <clarksuk.net> domain name, the domain name at issue, is confusingly similar to Complainant’s CLARKS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, C. & J. Clark International Limited, is the owner of the internationally famous CLARKS trademark for footwear. Started in 1825, Complainant is now one of the largest and most respected footwear companies in the world. Complainant designs, manufactures, distributes and operates retail stores selling shoes for men, women, and children. Complainant’s footwear is sold in department stores, specialty footwear stores, and in Complaint’s retail, outlet, and online stores through the Internet. Complainant’s global sales for 2010 were over £1.170 billion (approximately US$1.9 billion). Complainant has over 13,000 employees engaged in producing and selling approximately 50 million pairs of shoes each year. The CLARKS brand is well-known as identifying high quality shoes for men, women, and children. In the United States, Complainant has used the trademark CLARKS since 1947. Complainant is the owner of U.S. Trademark Reg. Nos. 691,307, Registered on January 12, 1960.
Respondent registered the domain name at issue on June 17, 2011 and uses the associate website to sell counterfeit goods using the CLARKS trademark without authorization.
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.”).
In the United States, Complainant has used the trademark CLARKS since 1947. Complainant is the owner of U.S. Trademark Reg. Nos. 691,307, Registered on January 12, 1960. Although Respondent appears to reside in Gibraltar, the Panel finds that Complainant does not need to register its mark in the country in which Respondent operates. 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). Accordingly, Complainant’s registration of the CLARKS mark with the USPTO 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)).
In the present case, the domain name <clarksuk.net> is confusingly similar to Complainant’s registered trademark CLARKS. The domain name <clarksuk.net> contains Complainant’s entire registered trademark and differentiates only by adding the geographic initials for the United Kingdom “uk”. Prior panels have held the addition of a geographic term, such as “uk”, does not differentiate a domain name to avoid confusion. See Seiko Epson Corp. and Epson America Inc. v. St. Kitts Registry, FA0710001093102 (Nat. Arb. Forum Dec. 3, 2007); The Royal Bank of Scotland Group v. Wild West c/o Wild, FA0709001082183 (Nat. Arb. Forum Nov. 2, 2007). The addition of a geographic identifier ('uk') do not adequately distinguish the mark, but rather increases the likelihood of confusion in that Complainant is a UK company and simply adding “uk” confirms to Internet users that they have found the correct website. C. & J. Clark International Limited v. Lin Chen Wei, FA1106001396337 (Nat. Arb. Forum Aug. 23, 2011). Additionally, those visiting <clarksuk.net> may further be confused by Respondent’s use of the CLARKS logo trademark throughout the shoe images on the website as well as on the website pages themselves. Finally, the addition of ‘.net’ is not sufficient to distinguish the domain name from the protected word. The suffix is required for registration of a domain name. Kevin Garnett v. Trap Block Techs., FA128073 (Nat. Arb. Forum Nov. 21, 2002); Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has no relationship with or permission from Complainant to register or use the disputed domain names or to use the CLARKS trademark. Respondent does not have any person named Clarks associated with it. Furthermore, Respondent cannot show any condition under the Paragraph 4(c) of the Policy or otherwise that demonstrates a legitimate interest in the domain names. Specifically, Respondent acquired the domain name at issue long after Complainant first acquired its rights in the trademark. As a result of this prima facie case made by Complainant, evidence must be produced by Respondent to overcome the presumption that Respondent has no rights or legitimate interests in the disputed domain names. See Facton Ltd. v. Lin Jiajin, D2010-2118 (WIPO Jan. 25, 2011); Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO Aug. 21, 2003). Additionally, there is no connection between the name <clarksuk.net> and Respondent. Furthermore, Respondent’s use of the domain names for the purpose of selling counterfeit goods is not a bona fide or fair use of the domain name. The sale of counterfeit goods has no legitimate interest associated with it. See Facton Ltd. v. Lin Jiajin, D2010-2118 (WIPO Jan. 25, 2011); Lilly ICOS LLC v. Dan Eccles, D2004-0750 (WIPO Nov. 8, 2004). Respondent’s improper uses of <clarksuk.net> do not meet the requirements of Policy paragraph 4(c) and therefore Respondent has no rights or legitimate interests with respect to <clarksuk.net>.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s use is found to be in bad faith pursuant to Policy paragraph 4(b)(iv), as it intentionally attempts to attract, for commercial gain, Internet users to <clarksuk.net> by creating a likelihood of confusion with Complainant’s CLARKS trademark as to the source, sponsorship, affiliation or endorsement of <clarksuk.net>. It is clear Respondent intends to attract Internet users to its website in order to purchase counterfeit goods. The sale of counterfeit goods is strong evidence of bad faith. See Facton Ltd. v. Lin Jiajin, D2010-2118 (WIPO Jan. 25, 2011); Prada S.A. v. Domains For Life, D2004-1019 (WIPO Jan. 27, 2005).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clarksuk.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 6, 2013
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