Vans, Inc. v. Aolder Mater
Claim Number: FA1308001514099
Complainant is Vans, Inc. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Aolder Mater (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vansoutletstores.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2013; the National Arbitration Forum received payment on August 12, 2013.
On August 12, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <vansoutletstores.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 August 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@vansoutletstores.com. Also on August 15, 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 September 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <vansoutletstores.com> domain name is identical to Complainant’s VANS mark.
2. Respondent does not have any rights or legitimate interests in the <vansoutletstores.com> domain name.
3. Respondent registered and uses the <vansoutletstores.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a trademark registration for its VANS mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,267,262, registered February 14, 1984), as well as other registrations around the world. Complainant uses the mark in connection with shoes and sports apparel.
Respondent registered the <vansoutletstores.com> domain name on January 21, 2013, and used it to resolve to a website that offered fake products in competition with those offered under Complainant’s mark.
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.”).
The Panel finds that Complainant’s USPTO registration establishes its rights in the VANS mark pursuant to Policy ¶ 4(a)(i). Previous panels have determined that USPTO registrations are sufficient to establish the complainant’s rights in the mark. 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)).
Respondent’s <vansoutletstores.com> domain name is confusingly similar to Complainant’s VANS mark because it fully incorporates the mark, and merely adds the generic terms “outlet” and “stores”, and the gTLD “.com”. The Panel notes that the terms “outlet” and “stores” are descriptive of Complainant’s channels of trade. Previous panels have determined that the addition of generic or descriptive terms in a domain name that includes the complainant’s mark does not distinguish the resulting domain name from the mark. 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)). Specifically, in ER Marks, Inc. and QVC, Inc. v. ICS INC., FA 1431846 (Nat. Arb. Forum April 17, 2012), the panel found the disputed domain <qvcoutletstores.com> confusingly similar to the complainant’s QVC mark despite the additions of the terms “outlet” and “stores.” Past panels also routinely find that the affixation of a gTLD is irrelevant for purposes of Policy ¶ 4(a)(i) because a top-level domain is a requirement of every domain name. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the <vansoutletstores.com> domain name is confusingly similar to Complainant’s VANS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent is not and never has been commonly known as “vansoutletstores” and has never used any trademark or service mark similar to the <vansoutletstores.com> domain name. The WHOIS record indicates that “Aolder Mater” is the registrant of the disputed domain name. Complainant also states that it has not granted Respondent any license, permission, or authorization to use its VANS mark. The Panel thus finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant argues that Respondent has never operated a bona fide or legitimate business under the disputed domain name, and is not making a noncommercial or fair use of the domain name. Complainant claims that Respondent previously used the disputed domain name to offer arguably counterfeit products bearing the VANS mark for sale, and to pass itself off as Complainant. Complainant claims that Respondent removed the website after Complainant sent a takedown notice. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the disputed domain name was used to sell counterfeit goods, or otherwise pose as a mark holder. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Therefore, the Panel finds that Respondent’s previous use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ (4)(c)(i) and 4(c)(iii).
Complainant alleges that the disputed domain name currently resolves to an inactive page, which also does not constitute as a bona fide or legitimate use, or a noncommercial or fair use. Previous panels have found that a respondent’s non-use of a confusingly similar domain name demonstrates that respondent has no rights or legitimate interests in the domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent’s non-use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use where the disputed domain name was not actively used Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that the <vansoutletstores.com> domain name previously resolved to a website that offered fake products in competition with those offered under Complainant’s mark, disrupting Complainant’s business. In Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), the panel held that the selling of counterfeit versions of the complainant’s products disrupted the complainant’s business and was evidence of bad faith registration and use. Similarly, past panels have found evidence of bad faith where the respondent uses the complainant’s mark to sell the complainant’s products. See also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant). The Panel finds that the prior, unauthorized sale of counterfeit goods under the VANS name is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii).
Previous panels have found evidence of bad faith where the respondent attempts to commercially gain from the sale of counterfeit goods by creating a likelihood of confusion with the complainant and its mark, as Respondent here has done. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). The Panel finds that Respondent’s previous efforts to commercially benefit from the sale of counterfeit VANS goods constitutes bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that the website previously resolving from the disputed domain name may have been used to fraudulently obtain personal information and money from Complainant’s customers. Such activity is generally referred to as phishing, defined in Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). Panels have consistently found evidence of bad faith where the complainant uses the domain name for fraudulent purposes. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). The Panel finds that Respondent’s phishing is further evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant also argues that Respondent registered the disputed domain name in bad faith because Respondent had at least constructive knowledge of Complainant’s rights in the VANS mark. The Panel agrees that Respondent had actual knowledge of Complainant’s rights, given Respondent’s sale of counterfeit VANS products, and thus finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Complainant has satisfied 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 <vansoutletstores.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 19, 2013
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