Topo Athletic, LLC v. Rickey Gibson
Claim Number: FA1705001732022
Complainant is Topo Athletic, LLC (“Complainant”), represented by Robert D. Carroll of Goodwin Procter LLP, Massachusetts, USA. Respondent is Rickey Gibson (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is/are <topoathleticshoes.com>, registered with 1Api Gmbh.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 16, 2017; the Forum received payment on May 16, 2017.
On May 18, 2017, 1Api Gmbh confirmed by e-mail to the Forum that the <topoathleticshoes.com> domain name is registered with 1Api Gmbh and that Respondent is the current registrant of the name. 1Api Gmbh has verified that Respondent is bound by the 1Api Gmbh 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 May 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@topoathleticshoes.com. Also on May 18, 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 June 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant operates a website that provides information about Topo Athletic and its athletic clothing. Complainant has registered the TOPO ATHLETIC mark with the United States Patent and Trademark Office (“USPTO”) and has thereby established its rights in the mark. See Compl., at Attached Ex. B (Reg. No. 4,456,303, registered Dec. 24, 2013). Respondent’s <topoathleticshoes.com> is confusingly similar to Complainant’s TOPO ATHLETIC mark because the domain name contains the mark in its entirety and merely adds a descriptive term, “shoes”, which describes goods associated with the mark, along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use its TOPO ATHLETIC mark. Respondent is attempting to divert consumers to Respondent’s website for commercial gain by imitating Complainant’s website and either selling Complainant’s products or counterfeit products. See Compl., at Attached Ex. A.
Respondent has registered and is using the disputed domain name in bad faith. When a domain name is clearly associated with a particular trademark owner, use of that domain name by someone unaffiliated with the owner constitutes opportunistic bad faith. Furthermore, Respondent is using the disputed domain name to attract consumers for commercial gain by a creating a likelihood of confusion as to the source, sponsorship, affiliation, and endorsement of the website and its products. It is clear that Respondent is attempting to disrupt the business of Complainant by using the disputed domain name to confuse consumers.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <topoathleticshoes.com>, was registered on March 24, 2017.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 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.”).
The Panel finds that the disputed domain name, <topoathleticshoes.com>, is confusingly similar to Complainant’s valid and subsisting trademark, TOPO ATHLETIC. Complainant has adequately pled it rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely appending the generic word “shoes” to the subsisting trademark and adding the g TLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information on record lists “rickey gibson” as the registrant name. As such, the Panel finds that Respondent is not commonly known by the disputed domain name.
Furthermore, Complainant argues that Respondent is attempting to divert consumers to Respondent’s website for commercial gain by imitating Complainant’s website and selling either Complainant’s products or counterfeit products at that website. Using a disputed domain name to sell either Complainant’s products without authorization, or counterfeit products, is not a bona fide offering of goods or services or a legitimate noncommercial fair use. 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). Even if Respondent is not selling Complainant’s products or counterfeit products, selling products that compete with Complainant’s business cannot constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use 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)”). Respondent purportedly uses the disputed domain name to operate a website that sells athletic footwear, which directly competes with Complainant’s sale of athletic footwear on its website. Compare Compl., at Attached Ex. A, with Compl., at Attached Ex. C.
Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use and, as such, has no rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent’s use of the disputed domain name to disrupt Complainant’s business constitutes bad faith. Using a domain name for the unauthorized sale of Complainant’s products, or counterfeit products, constitutes bad faith registration and use of that domain name. See CWC Direct LLC v. Ju Yu, FA1501001599464 (Forum Feb. 16, 2015) (“As Respondent is using the disputed domain name to sell counterfeit or unauthorized goods bearing the COLDWATERCREEK mark, the Panel finds evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).”). Furthermore, using a disputed domain name to sell competing products, even if those products are not Complainant’s products or counterfeit products, is also disruptive of Complainant’s business and therefore supports a finding of bad faith. See Lambros v. Brown, FA 198963 (Forum Nov. 19, 2003) (finding that Respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by Complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”). Respondent uses the disputed domain name to operate a website that sells athletic footwear, which directly competes with Complainant’s sale of athletic footwear on its website. Compare Compl., at Attached Ex. A, with Compl., at Attached Ex. C.
Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
Complainant further argues that regardless of competing use, Respondent’s use of the disputed domain name creates a likelihood of confusion as to the affiliation of its website for the purpose of confusing consumers for commercial gain. Using a disputed domain name to divert consumers for commercial gain supports a finding of bad faith. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Respondent uses the disputed domain name to sell athletic footwear, which Complainant is also in the business of selling. Compare Compl., at Attached Ex. A, with Compl., at Attached Ex. C. Furthermore, Respondent is attempting to imitate Complainant by prominently displaying Complainant’s logo, which is the same logo Complainant displays on its website. Id. Therefore, the Panel finds that Respondent is attempting to attract consumers for commercial gain by creating a likelihood of confusion as to the affiliation of its website and products, and therefore has registered and is using the disputed domain name in bad faith.
Finally, Complainant argues that the distinctive fame of its mark and its close association with Complainant supports a finding that Respondent has registered and is using the disputed domain name in bad faith with actual knowledge of Complainant’s prior rights in and to the trademark TOPO ATHLETIC because Respondent is unaffiliated with Complainant and its mark. Under the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights in and to the trademark TOP ATHLETIC.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <topoathleticshoes.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: June 13, 2017
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