Crocs, Inc. v. jing dian
Claim Number: FA1410001587214
Complainant is Crocs, Inc. (“Complainant”), represented by David S Lipkus of Kestenberg Siegal Lipkus LLP, Ontario, Canada. Respondent is jing dian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crocsshoes.us>, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2014; the National Arbitration Forum received payment on October 28, 2014.
On October 29, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <crocsshoes.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 2014 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@crocsshoes.us. Also on October 31, 2014, 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 December 1, 2014, 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 usTLD Policy, usTLD 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’s Contentions
1. Complainant sells footwear using its CROCS mark, along with other merchandise. This CROCS mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,836,415, registered Aug. 24, 2010). The <crocsshoes.us> domain name combines the entire mark with the very descriptive term “shoes” and the ccTLD extension “.us”—thus, the name is confusingly similar to the mark.
2. Respondent is not commonly known by the <crocsshoes.us>domain name, as the WHOIS record illustrates. Respondent only uses the domain name for a non-bona fide purpose: to sell counterfeit CROCS. See Compl., at Attached Ex. M.
3. Respondent has registered and used the domain name in bad faith. Respondent is profiting through the likelihood Internet users will mistake these counterfeits sold through the domain name’s website as legitimate CROCS goods. Further, Respondent had to have had actual knowledge when registering and using the domain name.
B. Respondent’s Contentions
1. Respondent did not submit a response.
1. Respondent’s <crocsshoes.us> domain name is confusingly similar to Complainant’s CROCS mark.
2. Respondent does not have any rights or legitimate interests in the <crocsshoes.us> domain name.
3. Respondent registered or used the <crocsshoes.us> domain name 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 sells footwear using its CROCS mark, along with other merchandise. This CROCS mark has been registered with the USPTO (e.g., Reg. No. 3,836,415, registered Aug. 24, 2010). The Panel agrees that the CROCS registration with the USPTO is sufficient evidence of Complainant’s rights in this proceeding to stand on Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant further claims that the <crocsshoes.us> domain name combines the entire mark with the very descriptive term “shoes” and the ccTLD extension “.us.” The Panel agrees that the “.us” suffix is of little relevance. See Lockheed Martin Corp. v. Roberson, FA 323762 (Nat. Arb. Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). Further, the Panel finds the “shoes” term to enhance confusing similarity because the word merely describes the major line of products Complainant sells. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Thus, the Panel agrees there is Policy ¶ 4(a)(i) confusing similarity here.
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 has no trademark rights relevant to the <crocsshoes.us> domain name. This Panel agrees that Respondent has no demonstrable rights in any trademark so as to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent is not commonly known by the <crocsshoes.us> domain name, as the WHOIS record illustrates. The Panel notes that “jing dian” is listed as the registrant of record for this domain name. The Panel also notes that Complainant alleges that it has not licensed Respondent’s use of the CROCS mark in trade. Thus, the Panel declines to find for Respondent under Policy ¶ 4(c)(iii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant claims that Respondent only uses the domain name for a non-bona fide purpose: to sell counterfeit CROCS. See Compl., at Attached Ex. M. The Panel agrees that the domain name is evidently used to sell goods that feature the CROCS mark. See id. This Panel concludes that such a use is wholly outside the protections of Policy ¶¶ 4(c)(ii) and (iv). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant also argues that Respondent is profiting through the likelihood Internet users will mistake these counterfeits sold through the domain name’s website as legitimate CROCS goods. The Panel takes note of how goods are sold on the disputed domain name’s website with reference to the CROCS mark in the items’ product descriptions. See Compl., at Attached Ex. M. In Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), the panel concluded that the respondent was selling counterfeits in a ploy to capitalize on the likelihood Internet users would associate a confusingly similar domain name with the complainant’s business. Here the Panel likewise finds Policy ¶ 4(b)(iv) bad faith based on Respondent’s use of the CROCS mark to sell unauthorized goods.
Complainant argues that Respondent must have had actual knowledge when registering and using the domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, 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).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <crocsshoes.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 12, 2014
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