Converse Inc. and All Star C.V. v. Bela Varga
Claim Number: FA1704001725714
Complainant is Converse Inc. and All Star C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Bela Varga (“Respondent”), Hungary.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue, both registered with GoDaddy.com, LLC, are <conversechucksstore.com> and <allstarsuperstar.com>.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2017; the Forum received payment on April 6, 2017.
On April 7, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <conversechucksstore.com> and <allstarsuperstar.com> domain names are 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 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@conversechucksstore.com, postmaster@allstarsuperstar.com. Also on April 10, 2017, 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 May 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
“Complainant” Converse Inc. and All Star C.V. are wholly owned subsidiaries of Nike, Inc., and are affiliated companies.
Converse, Inc. owns all relevant trademark registrations in the United States, and All Star C.V. owns the registrations in all other jurisdictions except Japan.
Complainant has for many years marketed athletic shoes around the world, including in retail stores.
Complainant holds a registration for the CONVERSE trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,872,822, registered August 10, 2004.
Complainant also holds a registration for the ALL STAR trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,807,854, registered January 27, 2004.
Complainant also has common law rights in the CHUCKS mark based upon its extensive and continuous use in commerce.
Respondent registered the domain names <conversechucksstore.com> and <allstarsuperstar.com> on November 4, 2016.
The domain name <conversechucksstore.com> is confusingly similar to Complainant’s CONVERSE and CHUCKS marks.
The domain name <allstarsuperstar.com> is confusingly similar to Complainant’s ALL STAR mark.
Respondent has neither any rights to nor any legitimate interests in either of the domain names.
Respondent has not been commonly known by either of the domain names.
Complainant has not licensed or otherwise authorized Respondent to use the CONVERSE, ALL STAR or CHUCKS marks for any purpose.
Respondent’s use of the domain names does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The domain name <conversechucksstore.com> resolves to a website that passes Respondent off as Complainant in order to sell goods in direct competition with the business of Complainant and to obtain personal information from Internet users seeking to become Complainant’s customers.
The domain name <allstarsuperstar.com> redirects to the website hosted at <conversechucksstore.com>.
Respondent knew of Complainant and its rights in the CONVERSE, ALL STARS and CHUCKS marks when it registered the domain names.
Respondent registered and now uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to trademarks in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) The same domain name were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Preliminary Issue: Multiple Complainants
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” Forum 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.”
In the instant proceedings, there are two discrete Complainants: Converse Inc. and All Star C.V. Both companies are wholly owned subsidiaries of Nike, Inc., and they are affiliated companies. Converse, Inc. owns all relevant trademark registrations in the United States, and All Star C.V. owns the registrations in all other jurisdictions except Japan.
It is well established that multiple parties may proceed as one party where they can show a sufficient link to one another. See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel there finding that:
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.
See also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), in which a panel treated two complainants as a single entity where both held rights in trademarks contained within disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum February 6, 2004), a panel found a sufficient link between multiple complainants where there was a license between them regarding use of a mark at issue in the proceeding.
There being no objection from Respondent, on the facts before us the allegations of the Complaint are deemed sufficient to establish a nexus between Converse Inc. and All Star C.V. justifying that they be permitted to proceed as a single complainant for all purposes in this proceeding. Accordingly, throughout the remainder of this proceeding, the two will be referred to collectively as “Complainant.”
Complainant has rights in the CONVERSE and ALL STAR trademarks for purposes of Policy ¶ 4(a)(i) by reason of its registration of those marks with a national trademark authority, the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum August 9, 2015) (finding, under Policy ¶ 4(a)(i), that a UDRP complainant had rights in a mark through its registration of that mark with the USPTO).
Complainant’s uncontested claim of rights in the CHUCKS mark by operation of the common law is also sufficient to satisfy the requirements of Policy ¶ 4(a)(i). See, for example, SeekAmerica Networks Inc. v. Tariq Masood, D2000-0131 (WIPO April 13, 2000):
The Rules do not require that the Complainant’s trademark or service mark be registered by a government authority or agency for such rights to exist.
As to all three marks, the reach of Complainant’s rights in its marks for purposes of Policy ¶ 4(a)(i) does not depend upon any validation of those marks in the geographic territory of Respondent. See, for example, Frank E. Rijkaard v. Marc Perez-Tejero, D2004-1044 (WIPO January 24, 2005):
[T]he Policy does not require that the trademark of the Complainant be protected in the Respondent’s country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the domain name <conversechucksstore.com> is confusingly similar to Complainant’s CONVERSE and CHUCKS marks. The domain name contains the two marks in their entireties, merely adding the descriptive term “store,” a reference to an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the marks, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Textron Innovations Inc. v. Sheng Liang / Sarawina, FA 1622906 (Forum July 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) where a respondent’s <greenleetextron.com> domain name combined a UDRP complainant’s TEXTRON and GREENLEE marks and added the gTLD “.com”).
See also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating a UDRP complainant’s entire mark and merely adding the generic term “credit” were confusingly similar to that complainant’s mark). The Panel may therefore find that the <conversechucksstore.com> domain name is confusingly similar to the CONVERSE and CHUCKS marks per Policy ¶ 4(a)(i).
We likewise conclude that Respondent’s <allstarsuperstar.com> domain name is confusingly similar to Complainant’s ALL STAR mark. The domain name contains the mark in its entirety, less only the space between its terms, and merely adds the generic term “superstar” and the gTLD “.com.” As with the first- mentioned domain name, these alterations of the mark, made in creating the domain name, do not save it from a finding of confusing similarity under the standards of the Policy. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015):
Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.
And, on the point of Respondent’s addition of the generic term “superstar” to Complainant’s mark in forming the <allstarsuperstar.com>domain name, see Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002), above.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy.
We begin by noting that Complainant contends that Respondent has not been commonly known by either of the domain names <conversechucksstore.com> and <allstarsuperstar.com>, and that Complainant has authorized Respondent to use its marks CONVERSE, ALL STAR or CHUCKS for any purpose. Moreover, the pertinent WHOIS information identifies the registrant of the two domain names only as “Bela Varga,” which does not resemble either of the domain names. On this record, we conclude that Respondent has not been commonly known by either of the contested domain names so as to be able to claim rights to or legitimate interests in either of them within the purview of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that a respondent was not commonly known by the <chevron-europe.com> domain name and so failed to show that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where the relevant WHOIS information identified the registrant of that domain name only as “Fred Wallace”). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name, and so failed to demonstrate that it had rights to or legitimate interests in that domain name, where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that the two disputed domain names resolve to the website at <conversechucksstore.com> which attempts to pass itself off as Complainant in order to sell goods in competition with the business of Complainant. This employment of the domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in either of the domain names within the meaning of those provisions of the Policy.
See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that a respondent’s attempt to pass itself off as a UDRP complainant online, in an unauthorized use of that complainant’s mark was evidence that that respondent has no rights to or legitimate interests in a disputed domain name under the provisions of Policy ¶ 4(c)(i) – (iii)). See also General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016), finding that:
[U]se of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).
As to Respondent’s undenied employment of the contested domain names to attempt to acquire the personal information of Internet users, see Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum December 13, 2007):
There is no dispute that respondent …[has]… used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’.
And see Morgan Stanley v. Zhange Sheng Xu, FA1501001600534 (Forum February 26, 2015):
The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The record is persuasive in demonstrating that Respondent employs the challenged <conversechucksstore.com> and <allstarsuperstar.com> domain names to pass itself off as Complainant in order to peddle goods in competition with the business of Complainant. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain names. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum March 13, 2000) (finding that a respondent showed bad faith in the registration and use of a domain name within the contemplation of Policy ¶ 4(b)(iv) by creating a likelihood of confusion with a UDRP complainant's mark with a domain name identical to that complainant’s mark in order to sell that complainant’s products).
Similarly indicative of Respondent’s bad faith in registering and using the domain names under Policy ¶ 4(b)(iv) is its employment of the domain names to conduct a phishing expedition. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding, under Policy ¶ 4(b)(iv), that a respondent’s use of a disputed domain name to pass itself off as a UDRP complainant in conducting a phishing scheme was evidence of bad faith registration and use).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the CONVERSE, ALL STAR and CHUCKS marks when it registered the <conversechucksstore.com> and <allstarsuperstar.com> domain names. This too demonstrates Respondent’s bad faith in registering the domain names. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum September 5, 2007) (finding, under Policy ¶ 4(a)(iii), that a respondent registered a domain name in bad faith after concluding that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <conversechucksstore.com> and <allstarsuperstar.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 16, 2017
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