PATAGONIA, INC. v. DAVID ENGLE
Claim Number: FA1603001664228
Complainant is PATAGONIA, INC. (“Complainant”), represented by Tara M. Vold of Vold & Williamson PLLC, Virginia, United States. Respondent is DAVID ENGLE (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME:
The domain name at issue is <usedpatagonia.com>, registered with eNom, Inc.
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 Forum electronically on March 7, 2016; the Forum received payment on March 7, 2016.
On March 7, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <usedpatagonia.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 March 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2016 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@usedpatagonia.com. Also on March 8, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 Contentions:
1. Complainant uses the PATAGONIA mark in connection with its business in the sale of men and women’s outdoor apparel. Complainant has registered the PATAGONIA mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,189,402, registered February 9, 1982), which demonstrates rights in the mark. See Compl., at Attached Ex. 2. Respondent’s <usedpatagonia.com> domain name is confusingly similar to the PATAGONIA mark as it incorporates the mark in its entirety while adding the descriptive word “used” and the generic top-level domain (“gTLD”) “.com”.
2. Respondent has no rights or legitimate interests in the <usedpatagonia.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <usedpatagonia.com> domain name. Rather, the domain name resolves to a website containing hyperlinks which purportedly resolve to direct competitors of Complainant from which Respondent presumably nets pay-per-click profits. See Compl., at Attached Ex. 5 (screenshot of homepage of resolving website associated with the disputed domain name, displaying the following hyperlinks: “Patagonia,” “Used Rio,” and “Used Chevrolets”).
3. Respondent is using the <usedpatagonia.com> domain name in bad faith. Respondent’s use of the website serves as a disruption of Complainant’s legitimate business purposes according to the language of Policy ¶ 4(b)(iii). Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website per Policy ¶ 4(b)(iv).
B. Respondent Contentions:
1. Respondent did not submit a response.
1. Respondent’s <usedpatagonia.com> domain name is confusingly similar to Complainant’s PATAGONIA mark.
2. Respondent does not have any rights or legitimate interests in the <usedpatagonia.com> domain name.
3. Respondent registered or used the <usedpatagonia.com> 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.
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(f), 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 uses the PATAGONIA mark in connection with men and women’s outdoor apparel. Complainant claims to have registered the PATAGONIA mark with the USPTO (e.g., Reg. No. 1,189,402, registered February 9, 1982), arguing such registrations demonstrate rights in a mark, even where Respondent operates in a different country. Panels have found, under such circumstances, that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Next, Complainant argues that Respondent’s <usedpatagonia.com> domain name is confusingly similar to the PATAGONIA mark as it incorporates the mark in its entirety while adding “used” prior to the mark, and the gTLD “.com”. Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Therefore, the Panel agrees that Respondent’s <usedpatagonia.com> domain name is confusingly similar to the PATAGONIA mark 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 has no rights or legitimate interests in the <usedpatagonia.com> domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name. The publicly available WHOIS report identifies “David Engle” as the registrant of record for the <usedpatagonia.com> domain name. Respondent has failed to submit a response in this proceeding. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Therefore, in light of the available evidence this Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <usedpatagonia.com> domain name. Rather, Complainant contends that the domain name resolves to a website containing hyperlinks which purportedly resolve to direct competitors of Complainant and unrelated links from which Respondent presumably net pay-per-click profits. See Compl., at Attached Ex. 5. Such links include: “Patagonia”, “Used Rio”, “Used Chevrolets”, and “Patagonia Vest Sale”. Id. In addition, Complainant contends that the “Patagonia” link resolves to a website with additional pages of URL links. These links resolve to sites for Patagonia dealers and Patagonia competitors. See Compl., at Attached Ex. 6. Such links include: “Official Columbia Site,” “North Face Jacket,” and “Patagonia Jacket Fleece”. Id. Panels have found that such use by a respondent to evince neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Bath & Body Works Brand Management, Inc. v. BPN c/o George Cristea FA 1101001369442 (Nat. Arb Forum January 26, 2011) (holding that the respondent’s use of the <bathandbodyworkscouponcodes.com> domain name to post links to unrelated links was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name). Therefore, this Panel agrees that Respondent’s <usedpatagonia.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii).
Complainant argues that Respondent’s use of the <usedpatagonia.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. Panel’s direction is directed back to Complainant’s Exhibits 5 & 6. Panels have agreed where a respondent has purported to divert Internet users to competitors of a complainant via hyperlinks related to such a complainant’s legitimate business, such use constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii).”). Therefore, this Panel agrees that Respondent’s <usedpatagonia.com> domain name falls within the purview of Policy ¶ 4(b)(iii).
Further, Complainant contends that Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. The Panel agrees with Complainant and hold that Internet user confusion which subsequently results in the clicking of included hyperlinks awards Respondent with click-through fees, constituting bad faith attraction for commercial gain 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usedpatagonia.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 13, 2016
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