Brown Shoe Co., Inc and its subsidiary Brown Group Retail, Inc. v. duanxiangwang / duanxiangwang
Claim Number: FA1309001520856
Complainant is Brown Shoe Co., Inc and its subsidiary Brown Group Retail, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is duanxiangwang / duanxiangwang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <faamousfootwear.com>, <famoisfootwear.com>, <famosufootwear.com>, <famouafootwear.com>, <famoudfootwear.com>, <famousffootwear.com>, <famousfotowear.com>, <famousgootwear.com>, <faomusfootwear.com>, <ffamousfootwear.com>, and <fsmousfootwear.com>, registered with Ename Technology Co., Ltd.
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.
John J. Upchurch as Panelist.
Complainant submitted a Chinese language Complaint to the National Arbitration Forum electronically on September 23, 2013; the National Arbitration Forum received payment on September 23, 2013.
On September 23, 2013, Ename Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <faamousfootwear.com>, <famoisfootwear.com>, <famosufootwear.com>, <famouafootwear.com>, <famoudfootwear.com>, <famousffootwear.com>, <famousfotowear.com>, <famousgootwear.com>, <faomusfootwear.com>, <ffamousfootwear.com>, and <fsmousfootwear.com> domain names are registered with Ename Technology Co., Ltd. and that Respondent is the current registrant of the names. Ename Technology Co., Ltd. has verified that Respondent is bound by the Ename 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 October 1, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 21, 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@faamousfootwear.com, postmaster@famoisfootwear.com, postmaster@famosufootwear.com, postmaster@famouafootwear.com, postmaster@famoudfootwear.com, postmaster@famousffootwear.com, postmaster@famousfotowear.com, postmaster@famousgootwear.com, postmaster@faomusfootwear.com, postmaster@ffamousfootwear.com, postmaster@fsmousfootwear.com. Also on October 1, 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 October 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
PANEL NOTE RE LANGUAGE OF THE PROCEEDINGS
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’s Contentions
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered all of the disputed domain names on August 7, 2013.
Respondent’s Contentions
Respondent did not submit a response.
1. Respondent’s <faamousfootwear.com>, <famoisfootwear.com>, <famosufootwear.com>, <famouafootwear.com>, <famoudfootwear.com>, <famousffootwear.com>, <famousfotowear.com>, <famousgootwear.com>, <faomusfootwear.com>, <ffamousfootwear.com>, and <fsmousfootwear.com> domain names are confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or legitimate interests in the <faamousfootwear.com>, <famoisfootwear.com>, <famosufootwear.com>, <famouafootwear.com>, <famoudfootwear.com>, <famousffootwear.com>, <famousfotowear.com>, <famousgootwear.com>, <faomusfootwear.com>, <ffamousfootwear.com>, and <fsmousfootwear.com> domain names.
3. Respondent registered or used the <faamousfootwear.com>, <famoisfootwear.com>, <famosufootwear.com>, <famouafootwear.com>, <famoudfootwear.com>, <famousffootwear.com>, <famousfotowear.com>, <famousgootwear.com>, <faomusfootwear.com>, <ffamousfootwear.com>, and <fsmousfootwear.com> domain names 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 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 states that it promotes and sells footwear goods under the FAMOUS FOOTWEAR mark. Complainant provides evidence that it has registered the FAMOUS FOOTWEAR mark with the CIPO (Reg. No. TMA633563, registered February 23, 2005). The Panel agrees that CIPO registration is sufficient evidence of Policy ¶ 4(a)(i) rights in the FAMOUS FOOTWEAR mark. See Cactus Rests. Ltd. v. Web Master, FA 671297 (Nat. Arb. Forum May 23, 2006) (“The Panel should not “second guess” the Patent Offices of Canada and the USA to say that Cactus Club should not have been registered as a trademark.”). As such, the Panel agrees that Complainant has established rights in its FAMOUS FOOTWEAR mark under Policy ¶ 4(a)(i), even when Respondent is located in China. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant contends that Respondent has registered all of the <faamousfootwear.com>, <famoisfootwear.com>, <famosufootwear.com>, <famouafootwear.com>, <famoudfootwear.com>, <famousffootwear.com>, <famousfotowear.com>, <famousgootwear.com>, <faomusfootwear.com>, <ffamousfootwear.com>, and <fsmousfootwear.com> domain names. Complainant notes that all of the domain names feature the non-distinctive gTLD “.com.” Complainant further claims that all of the domain names either transpose words of the full FAMOUS FOOTWEAR mark, or make a single-character error in the spelling of the FAMOUS FOOTWEAR mark. The Panel initially finds that neither gTLDs, nor the deletion of spacing, are relevant to a decision under the Policy. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel generally agrees that the <faamousfootwear.com>, <famoisfootwear.com>, <famouafootwear.com>, <famoudfootwear.com>, <famousffootwear.com>, <famousgootwear.com>, <ffamousfootwear.com>, and <fsmousfootwear.com> domain names merely differ from the mark by a single character. The Panel agrees that such minor alterations to the FAMOUS FOOTWEAR mark are not sufficient to defeat the confusing similarity of the domain names. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel further notes that in regards to the <famosufootwear.com>, <famousfotowear.com>, and <faomusfootwear.com> domain names, Respondent has transposed two letters in the FAMOUS FOOTWEAR mark to form the substance of the domain name. In Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002), the panel agreed that transposing the letters in a mark merely amplifies the confusing similarity between the domain name and the mark. The Panel thus agrees that as the only point of reference for any of these domain names is the FAMOUS FOOTWEAR mark, all of the domain names are confusingly similar under Policy ¶ 4(a)(i).
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 argues that Respondent is not known by these domain names, as evidenced through the WHOIS information. Complainant states that it has not licensed, authorized, permitted, or endorsed Respondent’s use of the FAMOUS FOOTWEAR mark in domain names. The Panel notes specifically that the WHOIS information for all of the domain names lists one “duanxiangwang” as the registrant of record. In the case of Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel applied the general principle that the WHOIS record provides the best information regarding the respondent’s potential identity when there is no response or any other statement from the respondent. The Panel thus agrees that Respondent here is not commonly known as any of these disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the domain names to send Internet users through to advertising websites that promote both unrelated and competing products. The Panel notes that all of the domain names resolve to various monetized advertisement portals that promote footwear-related advertisements along with other unrelated commercial advertisements. See Amended Compl., at Attached Ex. H. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), the panel did not find a bona fide offering of goods or services when the only purpose for the domain name was to promote competing and unrelated hyperlink advertisements to third-party websites. The Panel here likewise agrees that Respondent’s use of the domain names gives rise to neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant claims that Respondent is a serial and recalcitrant typosquatter. See Amended Compl., at Attached Ex. N. The Panel notes that Complainant does indeed provide evidence of prior UDRP decisions decided against Respondent. See, e.g., Tumblr, Inc. v. duanxiangwang, D2013–0441 (WIPO May 18, 2013); Chanel, Inc. v. duanxiangwang, D2012–1632 (WIPO Oct. 22, 2012); WordPress Found. V. duanxiangwang, D 2011–0836 (WIPO July 6, 2011). In Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), the panel found the existence of prior UDRP decisions ordering the transfer of respondent’s domain names to constitute sufficient evidence of bad faith under Policy ¶ 4(b)(ii). The Panel here finds that prior UDRP decisions ordering Respondent to transfer its domain names provide evidence of Policy ¶ 4(b)(ii) bad faith.
Complainant next contends that Respondent’s decision to promote competing hyperlinks through all of the domain names’ websites suggests a bad faith attempt to disrupt Complainant’s business. The Panel notes that each of the disputed <faamousfootwear.com>, <famouafootwear.com>, <famoudfootwear.com>, <famousffootwear.com>, <famousgootwear.com>, <ffamousfootwear.com>, and <fsmousfootwear.com> domain names include hyperlinks to businesses that compete with Complainant, for example “Clark Ladies Shoes,” “Aerosoles Shoe Sale,” or “Payless Shoes Coupons.” See Amended Compl., at Attached Ex. H. In the case of David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007), the panel agreed that the use of a confusingly similar domain name to host competing hyperlink advertisements brought to mind a bad faith attempt to unfairly disrupt the complainant’s business. The Panel here likewise agrees that Respondent’s conduct amounts to Policy ¶ 4(b)(iii) bad faith disruption of Complainant’s business.
Complainant also argues that Respondent generates advertising revenue by capitalizing on the likelihood that Internet users will mistake these domain names as being associated with, or originating from, Complainant and the FAMOUS FOOTWEAR mark. Complainant believes that Respondent receives referral or commission fees from these advertisements. The Panel again notes that all of the domain names resolve to websites that promote unrelated and competing hyperlinks to third-party company websites. See Amended Compl., at Attached Ex. H. The panel in Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), found bad faith through the likelihood of confusion when confusingly similar domain names were used to promote sponsored advertisements from which the respondent generated advertising revenue. The Panel here likewise agrees that Respondent’s use of the domain names to accrue advertising income is evidence of a Policy ¶ 4(b)(iv) bad faith attempt to confuse Internet users as to the source of the domain names for Respondent’s commercial gain.
Complainant argues that Respondent’s typosquatting conduct is in itself evidence of bad faith. The Panel notes that all of the domain names are essentially the FAMOUS FOOTWEAR mark in its reducible form of “famousfootwear” along with a transposition of letters or the introduction of a single-character error. The panel in Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005), found bad faith through typosquatting when it was clear that the domain names had been registered to prey upon the mistakes that Internet users may innocently make in finding the complainant’s business on the Internet. The Panel agrees that the differences between these domain names and the FAMOUS FOOTWEAR are subtle enough that the mere construction of the domain names provides an inference of Policy ¶ 4(a)(iii) bad faith registration.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <faamousfootwear.com>, <famoisfootwear.com>, <famosufootwear.com>, <famouafootwear.com>, <famoudfootwear.com>, <famousffootwear.com>, <famousfotowear.com>, <famousgootwear.com>, <faomusfootwear.com>, <ffamousfootwear.com>, and <fsmousfootwear.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 4, 2013
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