Mycoskie, LLC v. chenlou fu / fu chen lou
Claim Number: FA1305001501653
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is chenlou fu / fu chen lou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tomsoutletsale2013.com>, registered with CHENGDU WEST DIMENSION DIGITAL TECHNOLOGY CO., 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2013; the National Arbitration Forum received payment on June 3, 2013. The Complaint was submitted in English and Chinese.
On May 26, 2013, CHENGDU WEST DIMENSION DIGITAL TECHNOLOGY CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <tomsoutletsale2013.com> domain name is registered with CHENGDU WEST DIMENSION DIGITAL TECHNOLOGY CO., LTD. and that Respondent is the current registrant of the name. CHENGDU WEST DIMENSION DIGITAL TECHNOLOGY CO., LTD. has verified that Respondent is bound by the CHENGDU WEST DIMENSION DIGITAL TECHNOLOGY CO., 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 June 6, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 26, 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@tomsoutletsale2013.com. Also on June 6, 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 July 3, 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 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.
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 requests that the domain name be transferred from Respondent to Complainant.
i. Respondent is not known by the domain name.
ii. The only website that Respondent has ever had located at the domain name <tomsoutletsale2013.com> offers counterfeit TOMS goods.
i. Respondent has registered the domain name <tomsoutletsale2013.com> to disrupt the business of Complainant and by intentionally creating actual confusion with Complainant’s marks.
ii. Respondent is offering and advertising for precisely the same kind of goods at its <tomsoutletsale2013.com> website as Complainant’s exclusive licensee offers under Complainant’s federally protected TOMS mark.
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.
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 contends that it owns federal common law rights in the use of the TOMS trademarks for use in connection with a multitude of goods, including, but not limited to shoes. Complainant asserts 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). The Panel notes that Respondent appears to reside in China. However, the Panel finds that Policy ¶ 4(a)(i) only requires that Complainant establish its rights in its mark in some jurisdiction, and that it is not necessary to register the mark in the country in which Respondent resides. 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 has sufficiently established rights in the TOMS mark pursuant to Policy ¶ 4(a)(i) through its registration with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant asserts that Respondent’s domain name is confusingly similar to and infringes on Complainant’s trademark rights. The Panel notes that Respondent adds the generic terms “outlet” and “sale” to Complainant’s TOMS mark in its <tomsoutletsale2013.com> domain name. The Panel finds that Respondent’s addition of generic terms or phrases to a mark does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel also notes that Respondent adds the numerals “2013” to its domain name. The Panel finds that Respondent’s addition of numerals (in this case, the current year) to the domain name is inconsequential to a Policy ¶ 4(a)(i) analysis. See Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The Panel determines that Respondent’s addition of a gTLD to Complainant’s TOMS mark in the domain name does not overcome a finding of confusing similarity under 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”). Therefore, the Panel concludes that Respondent’s <tomsoutletsale2013.com> domain name is confusingly similar to Complainant’s TOMS mark pursuant to Policy ¶ 4(a)(i).
Complainant 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 contends that Respondent is not known by the domain name. Complainant alleges that Respondent has never used and/or traded under the name “TOMS” or “TOMSOUTLET” names. The Panel notes that the WHOIS information indicates that “chenlou fu / fu chen lou” is the registrant of the domain name. Therefore, the Panel determines that Respondent is not commonly known by the <tomsoutletsale2013.com> 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 asserts that the only website that Respondent has ever established at the domain name <tomsoutletsale2013.com> offers counterfeit TOMS goods. The Panel notes that Respondent’s domain name resolves to a webpage purporting to sell shoes that appear to replicate the products Complainant sells. The Panel finds that Respondent is using the domain name to sell counterfeit goods, the Panel finds that Respondent is not using the domain name for 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 has proven this element.
Complainant argues that Respondent has registered the domain name <tomsoutletsale2013.com> to disrupt the business of Complainant and by intentionally creating actual confusion with Complainant’s marks. The Panel notes that Respondent’s domain name links to a website featuring counterfeit TOMS products. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008), the panel concluded that the complainant’s business was disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products. Thus, the Panel finds that Respondent’s use of the domain name to sell counterfeit products disrupts Complainant’s legitimate business pursuant to Policy ¶ 4(b)(iii).
Complainant claims that Respondent is offering and advertising for precisely the same kind of goods at its <tomsoutletsale2013.com> website as Complainant’s exclusive licensee offers under Complainant’s federally protected TOMS mark. The Panel notes that Respondent’s <tomsoutletsale2013.com> website offers counterfeit TOMS products for sale. Complainant contends that it is clear that Respondent is attempting to divert business and customers from Complainant’s exclusive licensee to Respondent’s website. 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 <tomsoutletsale2013.com> domain name or by typing “TOMS” or “TOMS OUTLET” into a search engine and thereafter being mistakenly directed to Respondent’s website. Prior panels have found that a respondent’s use of a domain name to sell counterfeit products misleads and diverts Internet users for respondent’s own commercial gain. 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). Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes attraction for commercial gain, showing bad faith use and registration of the domain name under Policy ¶ 4(b)(iv).
Complainant contends 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 finds that, due to Respondent’s sale of counterfeit TOMS products on its website, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds 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).
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 <tomsoutletsale2013.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: July 16, 2013
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