The Rockport Company LLC v. Aizza Marcelo
Claim Number: FA1612001709459
Complainant is The Rockport Company LLC (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Aizza Marcelo (“Respondent”), Peoples Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rockportstore.co>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 23, 2016; the Forum received payment on December 23, 2016.
On December 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rockportstore.co> 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 December 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2017 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@rockportstore.co. Also on December 28, 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 January 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is a global designer, manufacturer, and retailer of footwear, clothing, and accessories. Complainant uses the ROCKPORT mark in relation to its business practices. Complainant has registered the ROCKPORT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,075,072, registered Oct. 11, 1977). Additionally, the ROCKPORT mark is registered in China and Hong Kong (e.g. Reg. Nos. 6,276,521 & 1988B3830, registered Apr. 7, 2010 & Feb. 18, 1987, respectively). Complainant asserts Respondent’s <rockportstore.co> is confusingly similar to Complainant’s ROCKPORT mark because the mark is incorporated in its entirely, adding the descriptive term “store” and the “.co” country code top-level domain (“ccTLD”).
ii) Respondent does not have rights or legitimate interests in <rockportstore.co>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the mark in any regard. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain name. Respondent’s <rockportstore.co> directs Internet users to web pages displaying Complainant’s mark and offering counterfeit goods bearing the ROCKPORT mark.
iii) Respondent registered and is using <rockportstore.co> in bad faith. The disputed domain name diverts Internet users to a counterfeit website displaying Complainant’s mark and selling counterfeit goods. Respondent’s apparent intent is to disrupt Complainant’s business, thus evincing bad faith under Policy ¶ 4(b)(iii). Respondent registered <rockportstore.co> with actual knowledge of Complainant and its rights to the ROCKPORT mark.
B. Respondent
Respondent has not submitted a response. The Panel notes that Respondent registered <rockportstore.co> on July 4, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 (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 is a global designer, manufacturer, and retailer of footwear, clothing, and accessories. Complainant uses the ROCKPORT mark in relation to its business practices. Complainant claims it has registered the ROCKPORT mark with USPTO (e.g., Reg. No. 1,075,072, registered Oct. 11, 1977). Additionally, the ROCKPORT mark is registered in China and Hong Kong (e.g. Reg. Nos. 6,276,521 & 1988B3830, registered Apr. 7, 2010 & Feb. 18, 1987, respectively). Panels typically hold that mark registrations with USPTO and other government agencies is sufficient to establish rights in a mark. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”); Honeywell Int’l Inc. v. r9.net, FA 445594 (Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights to the ROCKPORT mark.
Complainant asserts Respondent’s <rockportstore.co> is confusingly similar to Complainant’s ROCKPORT mark because the mark is incorporated in its entirely, adding the descriptive term “store” and the “.co” ccTLD. Panels have held that disputed domain names are confusingly similar when a mark is incorporated in its entirety with generic terms and gTLDs added to it. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Leland Turner v. joseph derer, FA 1618086 (Forum June 25, 2015) (“The [<lelandturner.com>] Domain Name consists of the Complainant's unregistered mark LELAND TURNER plus the gTLD designation .com. The addition of the .com gTLD does not serve to distinguish the Domain Name from the Complainant's LELAND TURNER mark and the Panellist finds that this domain name is identical to a mark in which the Complainant has rights for the purpose of the Policy.”). The Panel finds that Respondent’s <rockportstore.co> is confusingly similar to Complainant’s mark.
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 (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 (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 maintains Respondent does not have legitimate rights or interests in <rockportstore.co>. Moreover, Complainant asserts Respondent is not commonly known by the disputed domain name. To support this argument, Complainant contends that Respondent is not commonly known by the disputed domain name. WHOIS information associated with the disputed domain name identifies Respondent as “Aizza Marcelo.” Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of information to the contrary. State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name.
Furthermore, Complainant avers it has not authorized or licensed Respondent to use the mark in any regard. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain name. Instead, Respondent’s <rockportstore.co> directs Internet users to a webpage displaying Complainant’s mark and offering counterfeit goods bearing the ROCKPORT mark. The sale of counterfeit goods evinces a lack of a bona fide offering of goods or services or a legitimate non-commercial or fair use under Policy ¶ 4(c)(i). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization); Keihin Corp. v. Youli Ltd., FA 1106190 (Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business). Thus, the Panel finds that Respondent has no rights or legitimate interests in <rockportstore.co> under Policy ¶4(c)(i) or ¶ 4(c)(iii).
Respondent registered and is using <rockportstore.co> in bad faith. The Panel recalls that the disputed domain name diverts Internet users to a counterfeit website displaying Complainant’s ROCKPORT mark, which sells counterfeit goods bearing said mark. To support its claim, Complainant argues Respondent’s apparent intent is to disrupt Complainant’s business through the sale of counterfeit goods, thus evincing bad faith under Policy ¶ 4(b)(iii). In a similar case, the Panel in Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, found that “Respondent’s use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant’s business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).” (FA1410001587466 (Forum Dec. 13, 2014)). See also H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum Apr. 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii)). In the instant case, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ (b)(iii).
Finally, Complainant contends Respondent registered <rockportstore.co> with actual knowledge of Complainant and its rights to the ROCKPORT mark. Complainant argues that Respondent’s obvious use of the mark and the sale of counterfeit goods branded with the ROCKPORT mark at <rockportstore.co> evinces that Respondent knew or should have known about Complainant and its rights to the mark. Panels have found evidence of bad faith where the respondent registered the disputed domain name with actual knowledge of the complainant and its trademark rights. Prior panels have determined that the use of a domain name to sell counterfeit goods bearing the infringed mark provides sufficient basis to deduce a respondent’s actual knowledge. See Mycoskie, LLC v. William Kelly, FA 1488105 (Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.”). Therefore, the Panel infers that Respondent had actual notice of Complainant and its rights to the marks when it registered the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rockportstore.co> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 2, 2017
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