Brown Shoe Company, Inc. and its subsidiary Brown Group Retail, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1309001520868
Complainant is Brown Shoe Company, Inc. and its subsidiary Brown Group Retail, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), represented by Paul Keating of Law.es, Spain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <famousfootwaer.com> and <famusfootwear.com>, registered with Fabulous.Com Pty 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2013; the National Arbitration Forum received payment on September 23, 2013.
On September 24, 2013, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <famousfootwaer.com> and <famusfootwear.com> domain names are registered with Fabulous.Com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.Com Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty 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”).
Based on a Deficiency Letter, sent on September 25, 2013 from the National Arbitration Forum to Complainant, the Complainant submitted an Amended Complaint to the Respondent and the National Arbitration Forum on September 30, 2013.
On September 30, 2013, the Forum served the Complaint and all Annexes, including a 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@famousfootwaer.com, postmaster@famusfootwear.com. Also on September 30, 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.
A timely Response was received and determined to be complete on October 21, 2013.
An Additional Submission from the Complainant was received on October 28, 2013, and determined to have been received in a timely manner according to The Forum's Supplemental Rule #7.
An Additional Submission from the Respondent was received on November 4, 2013, and determined to have been received in a timely manner according to The Forum's Supplemental Rule #7.
On October 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant has more than 130 years of experience in the footwear industry and operates more than 1,300 retail shoe stores in the United States with annual net sales exceeding $2.5 billion. The Complainant has spent millions of dollars advertising and promoting its FAMOUS FOOTWEAR trademark on the Internet via its <famousfootwear.com> domain name. More than 140 million consumers have visited Complainant’s Famous Footwear stores and its <famousfootwear.com> domain name.
The Complainant contends it has rights in the FAMOUS FOOTWEAR trademark, used in connection with the operation of a retail shoe store. The Complainant is the owner of a registration with the Canadian Intellectual Property Office (“CIPO”) (FAMOUS FOOTWEAR word mark, reg. No TMA633563, filed November 7, 2003, registered February 23, 2005). The Complainant admits that the disputed domain names predate this trademark registration, but not the trademark registration filing date.
The Complainant also urges that it has common law rights in the FAMOUS FOOTWEAR trademark because the mark has achieved secondary meaning among the general public. The Complainant points to evidence including its first use in commerce dating to November 2002 (See Complainant’s Exhibit E), registration of Complainant’s <famousfootwear.com> created on November 6, 1996 (See Complainant’s Exhibit J), and press releases predating the Respondent’s registration of the disputed domain names (See Complainant’s Exhibit G).
The Respondent’s <famousfootwaer.com> and <famusfootwear.com> domain names are confusingly similar to the Complainant’s FAMOUS FOOTWEAR trademark. The <famousfootwaer.com> domain name includes the Complainant’s trademark in its entirety, with the only difference being the transposition of the letters “a” and “e.” The <famusfootwear.com> domain name includes Complainant’s trademark in its entirety, with the only difference being the removal of the first instance of the letter “o” in the Complainant’s mark. Both disputed domain names include the generic top-level domain (“gTLD”) “.com.”
The Respondent does not have legitimate rights or interests in the <famousfootwaer.com> and <famusfootwear.com> domain names, as
a. Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its FAMOUS FOOTWEAR trademark in any way.
b. Respondent is using the <famousfootwaer.com> and <famusfootwear.com> domain names to redirect Internet users to a website featuring generic third-party links, some of which directly compete with Complainant’s business. See Complainant’s Exhibit H.
Respondent registered and is using the <famousfootwaer.com> and <famusfootwear.com> domain names in bad faith, as
a. Both disputed domain names are listed for sale. See Complainant’s Exhibit H.
b. The Respondent is a serial cybersquatter, and searches through the NAF and WIPO UDRP decision databases reveal Respondent has engaged in an ongoing pattern of such behavior.
c. The advertisements displayed on the resolving websites connected to the <famousfootwaer.com> and <famusfootwear.com> domain names promote products that compete with the Complainant, thereby disrupting the Complainant’s business. See Complainant’s Exhibit H.
d. Respondent is using the <famousfootwaer.com> and <famusfootwear.com> domain names to attract and mislead consumers to confusingly similar domain names for Respondent’s own profit via click-through links. See Complainant’s Exhibit H.
e. Respondent’s conduct constitutes typosquatting.
Respondent registered the <famousfootwaer.com> domain name on October 10, 2004 and the <famusfootwear.com> domain name on February 19, 2004.
B. Respondent
The Respondent initially states that the Respondent received a Written Notice of Complaint and Commencement of Administrative Proceeding only after several requests and in an inconsistent manner with the result that the Respondent received an original Complaint followed by an Amended Complaint, not including a separate filing of exhibits and the Respondent is presupposing that the original exhibits apply. Further, the Respondent claims that the Respondent did not receive any copy of a complaint (or exhibits) from the Complainant, concluding that this renders the Complainant’s “certification” false.
The Respondent also states that the words “famous” and “footwear” are merely descriptive terms and do not exclusively reference the Complainant or its operations. The terms were only intended to descriptively promote famous brands of shoes. Further, Respondent denies all prior knowledge of the Complainant and therefore cannot have typosquatted the Complainant’s mark, and the fact that the disputed domain names are typos does not rise to the level of infringement.
The Respondent has a legitimate interest because the pay-per-click pages to which the <famousfootwaer.com> and <famusfootwear.com> domain names resolve reference the term “famous footwear” in a descriptive sense to reference all instances in which the term “famous” is used in conjunction with brands of footwear.
The Respondent did not register or use the <famousfootwaer.com> or <famusfootwear.com> domain names in bad faith, as
a. The Complainant has not provided evidence that it enjoys widespread recognition outside of the United States, and the Respondent is not located in the United States nor does the Respondent do business in the United States.
b. The Complainant has an inherently weak descriptive mark, and this fact does not give the Complainant the right to preclude others from using such a descriptive term.
c. For the Respondent to have typosquatted, the Respondent must have been aware of the Complainant’s mark and targeted the Complainant and its mark at the time of registration. The Respondent denies all prior knowledge of the Complainant.
d. The Respondent has owned the <famousfootwaer.com> and <famusfootwear.com> domain names for over nine years without the Complainant bringing a complaint. The Respondent made investments to renew the disputed domain names, which is evidence of the Respondent’s continued interest in the disputed domain names.
C. Additional Submissions
Complainant’s Additional Submission:
The Complainant claims to have provided the Respondent correctly with a copy of the Complaint as well as Annexes.
The Complainant repeats that the Disputed Domain Names are typographical errors of the Complainant’s registered trademark. The Respondent could not have been unaware of the trademark, as it is a registered trademark and online searches for the term “FAMOUS FOOTWEAR” gives over 17 million results, many referencing the Complainant’s trademark and website.
The Respondent claims that the PPC links on the screenshots provided with the original filing, reference the term in a descriptive sense. The Complainant claims that additional screenshots show that when the links are clicked, a new landing page appears showing the Complainant’s website and its competitors.
The Complainant further notes that the Respondent claims that he did not register or use the Disputed Domain Names in bad faith and did not have the Complainant in mind when registering; however, the Respondent purposely chose a typographical error for a well-known mark. In addition, the Respondent has chosen to sell the Disputed Domain Names through an online marketplace for domain owners to sell their domain names.
Respondent’s Additional Submission:
The Respondent states again that the Respondent did not timely receive copies of all filings from the Complainant.
The Respondent claims that the Complainant’s Additional Submission is an attempt to ”redo” the Complaint, and that the Additional Submission is not true, correct or submitted for proper purposes, and should therefore be disregarded.
According to the Respondent, Additional Submission filings should only be accepted if there are exceptional circumstances, facts that could not have been known to the complainant at the time the complaint was filed. The Respondent claims that the Complainant’s Additional Submission does not meet any of the limited exceptions in which Additional Submissions (“supplemental filings”) have been allowed by either NAF or WIPO panels.
As to the Additional Submission as such, the Respondent points out that the Complainant has not proved that the trademark was famous at the time of Respondent’s registration of the disputed domain names.
The Respondent claims the Complainant has fabricated the evidence by manipulating the PPC search results page.
Respondent argues that the Complainant has no exclusive right to use FAMOUS FOOTWEAR in connection with shoes, and that a consumer is not confused by the descriptive use of an entirely descriptive term. Again, the Respondent denies all prior knowledge of the Complainant.
Finally, the Respondent denies any response for, or connection to, the reference at the web page connected to the disputed domain name, that links further to a separate website, operated by a third party broker and offering the disputed domain name for sale.
Trademarks and Disputed Domain Name
The Complainant is the owner Canadian national trademark registration No TMA633563 FAMOUS FOOTWEAR (word), filed November 7, 2003, registered February 23, 2005 in respect of “operation of a retail shoe store” with November 2002 as the date of first use.
Respondent registered the disputed domain names <famousfootwaer.com> on October 10, 2004 and <famusfootwear.com> on February 19, 2004.
Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Brown Shoe Company, Inc. and Brown Group Retail, Inc. Complainant argues that Brown Group Retail, Inc. is a wholly-owned subsidiary of Brown Shoe Company, Inc. Complainant explains that Brown Group Retail, Inc’s corporate structure includes an operating division called Famous Footwear, which is the retailer that uses the FAMOUS FOOTWEAR trademark that is involved in this proceeding.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated: It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and the Panel will therefore treat them together as a single entity in this proceeding.
Delivery of Complaint to Respondent not in Accordance with UDRP
The Respondent argues that it did not promptly receive the Complaint from Complainant as is required by Rule 3 of the UDRP. In an email dated September 26, 2013, Respondent stated that while it had received notice of the Complaint from the Forum, it had not yet received a copy from Complainant. Rule 3(b)(xii) requires that the Complaint state “that a copy of the complaint . . . has been sent or transmitted to Respondent . . . in accordance with [Rule] 2(b).” Rule 2(b) states that communication to the parties may be made electronically via the Internet or any other preferred means stated by either party. Respondent is concerned that Complainant did not comply with the Rules and has falsified its statement to the Panel. Under Rule 2(b)(i), “It shall be the responsibility of the sender to retain records of the fact and circumstances, which shall be available for inspection by affected parties.”
The Panel notes however that the Amended Complaint, together with Amended Complaint Annex, is clearly marked as sent to the Respondent from the Complainant, with cc to the National Arbitration Forum. The Panel therefore concludes that the Complaint has been filed in accordance with Rule 3(b)(xii).
Additional Submissions
The Forum's Supplemental Rule #7 states that a party may submit additional written statements and documents to the Forum and the opposing party, that each party is limited to one additional submission, and that additional submissions must not amend the Complaint or Response.
The Panel finds that both the Complainant and the Respondent have met these requirements accordingly, and will therefore accept and consider the Additional Submissions filed by both Complainant and Respondent.
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.
The Complainant contends it has rights in the FAMOUS FOOTWEAR trademark, used in connection with the operation of a retail shoe store. The Complainant states it is the owner of a registration with the CIPO (Reg. No TMA633563, filed November 7, 2003, registered February 23, 2005). The Complainant admits that the disputed domain names predate this trademark registration, but not the trademark registration filing date. As shown in previous cases, a complainant does not need to have a registration in a respondent’s country of operation. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Also, the relevant date of rights in a registered trademark dates back to the filing date of the trademark application. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Therefore, the Panel find that Complainant has rights in the FAMOUS FOOTWEAR mark under Policy ¶ 4(a)(i) dating back to November 7, 2003.
The Complainant also urges that it has common law rights in the FAMOUS FOOTWEAR trademark because the mark has achieved secondary meaning among the general public. Although the evidence for this claim is not complete, the Panel do not rule out that this should be the case. It is enough, however, to note that FAMOUS FOOTWEAR is a registered trademark.
The Complainant contends that Respondent’s <famousfootwaer.com> and <famusfootwear.com> domain names are confusingly similar to Complainant’s FAMOUS FOOTWEAR trademark. The Complainant states that the <famousfootwaer.com> domain name includes Complainant’s trademark in its entirety, with the only difference being the transposition of the letters “a” and “e.” The Complainant also states that the <famusfootwear.com> domain name includes Complainant’s trademark in its entirety, with the only difference being the removal of the first instance of the letter “o” in Complainant’s mark. The Complainant notes that both disputed domain names include the gTLD “.com.”
The Panel notes that the disputed domain names remove the space that exists in Complainant’s FAMOUS FOOTWEAR trademark.
First, the Panel finds that the transposition of letters in a trademark does not sufficiently distinguish a disputed domain name from a complainant’s trademark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”).
Next, the Panel finds that the removal of a single letter from a trademark does not sufficiently distinguish a disputed domain name from a complainant’s trademark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”).
Lastly, the Panel finds that the removal of a space and the addition of a gTLD do not establish distinctiveness. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Therefore, the Panel finds that the Respondent’s <famousfootwaer.com> and <famusfootwear.com> domain names are confusingly similar to the Complainant’s FAMOUS FOOTWEAR trademark under Policy ¶ 4(a)(i).
While the Respondent contends that the <famousfootwaer.com> and <famusfootwear.com> domain names are comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Once the Complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. 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.”).
The Complainant contends that the Respondent does not have rights or legitimate interests in the <famousfootwaer.com> and <famusfootwear.com> domain names. The Complainant asserts that the Respondent is not commonly known by the disputed domain names, and the Complainant has not authorized the Respondent to use its FAMOUS FOOTWEAR mark in any way. The Panel note that the WHOIS record for both of the disputed domain names lists “Disclosed Agent for YOLAPT” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by the Complainant to use the FAMOUS FOOTWEAR trademark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel find that Respondent is not commonly known by the <famousfootwaer.com> or <famusfootwear.com> domain name for the purposes of Policy ¶ 4(c)(ii).
The Complainant claims that the Respondent is using the disputed domain names to redirect Internet users to a website featuring generic third-party links, some of which directly compete with the Complainant’s business. As stated by panels in prior cases, using a disputed domain name to display competing links does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)).
In this case, the Panel finds that the Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the Respondent is using the <famousfootwaer.com> and <famusfootwear.com> domain names to display links of the Complainant’s competitors.
The Complainant contends that the Respondent registered and is using the <famousfootwaer.com> and <famusfootwear.com> domain names in bad faith.
The Complainant states that both disputed domain names are listed for sale. See Complainant’s Exhibit H. The Panel notes that the offer is made in a header on each of the disputed domain names. Offering to sell a disputed domain name that is confusingly similar to a trademark may justify a finding of bad faith under Policy ¶ 4(b)(i). See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
The Respondent denies any response for, or connection to, the offer to sale, claiming that the reference link takes the user to an independent third party broker’s site. The Panel is not convinced by this argument. A respondent and domain name holder is in fact responsible for all content appearing on a website at its domain name, even if such respondent may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. In this case, the Respondent has not shown any good faith attempt toward preventing the link to a “third party web site” offering the disputed domain names for sale. See Nat’l Football League Props., Inc. & Chargers Football Co. v. One Sex Entm’t Co., a/k/a chargergirls.net, D2000-0118 (WIPO April 17, 2000).
The Complainant contends that the Respondent is a serial cybersquatter, and searches through the NAF and WIPO UDRP decision databases reveal that the Respondent has engaged in an ongoing pattern of such behavior. The Panel notes that a search for the Respondent in the NAF decision database results in thirty-eight decisions, with every decision resulting in transfer of the disputed domain name or names. Past panels have found that a pattern of this type of conduct is sufficient to find bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds that the Respondent’s history of adverse UDRP decisions resulting in transfer of Respondent’s domain names constitutes evidence of bad faith in this case under Policy ¶ 4(b)(ii).
The Complainant claims that the advertisements displayed on the resolving websites connected to the <famousfootwaer.com> and <famusfootwear.com> domain names promote products that compete with Complainant, thereby disrupting Complainant’s business. See Complainant’s Exhibit H. Past panels have found that using a disputed domain name to disrupt a complainant’s business by operating a pay-per-click website featuring links of a complainant’s competitor constitutes bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). In this case, the Panel finds that the Respondent’s use of the <famousfootwaer.com> and <famusfootwear.com> domain names promotes products that compete with Complainant, thereby disrupting Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
The Complainant contends that the Respondent is using the disputed domain names to attract and mislead consumers to confusingly similar domain names for the Respondent’s own profit via click-through links. See Complainant’s Exhibit H. Past panels have found that this type of conduct constitutes bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that the Respondent’s use of the <famousfootwaer.com> and <famusfootwear.com> domain names to attract and mislead consumers to confusingly similar domain names for the Respondent’s own profit via click-through links constitutes bad faith under Policy ¶ 4(b)(iv).
Finally, the Complainant claims that the Respondent’s conduct constitutes typosquatting. In Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), the panel defined typosquatting as the “registration of a disputed domain name that capitalizes on Internet users’ typographical errors.” Past panels have found that typosquatting constitutes bad faith under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). Here, the Panel finds that the Respondent’s conduct in regards to the <famousfootwaer.com> and <famusfootwear.com> domain names constitutes typosquatting and thus bad faith under Policy ¶ 4(a)(iii).
Doctrine of Laches
The Respondent states that it has owned the disputed domain names for over nine years without the Complainant bringing a complaint, and further claims that the Respondent has made investments to renew the disputed domain names, which is evidence of Respondent’s continued interest in the domain names. The Panel takes these comments as a reference to the Doctrine of Laches.
However, the Panel finds that the doctrine of laches does not apply as a defense, and therefore choose to disregard the Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <famousfootwaer.com> and <famusfootwear.com> domain names be TRANSFERRED from Respondent to Complainant, Brown Shoe Company, Inc.
Petter Rindforth, Panelist
Dated: November 6, 2013
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