The Rockport Company LLC v. Janet Townsend
Claim Number: FA1711001758943
Complainant is The Rockport Company LLC (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Janet Townsend (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rockport-uk.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2017; the Forum received payment on November 16, 2017.
On November 18, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <rockport-uk.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@rockport-uk.com. Also on November 22, 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 December 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed as Panelist.
the Honorable Charles K. McCotter, Jr. (Ret.) 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, The Rockport Company, LLC, is a well-known and highly-respected global footwear company and is the owner of the internationally famous ROCKPORT trademark. Complainant has rights in the ROCKPORT mark based upon its multiple registrations of the mark with the United States Patent and Trademark Office (“USPTO”) and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g. USPTO—Reg. No. 1,075,072, registered Oct. 11, 1977; OHIM—Reg. No. 004920914, registered Aug. 3, 2007). Respondent’s <rockport-uk.com> is confusingly similar to Complainant’s ROCKPORT mark, as the domain name only adds the geographic tem “uk” and the “.com” generic top-level domain (“gTLD”) to the fully-incorporated mark. Further, there is evidence of actual customer confusion in the form of an email sent to Complainant by a person who fell for Respondent’s ruse.
Respondent has no rights or legitimate interests in the <rockport-uk.com> domain name. Complainant has not authorized or licensed Respondent to register the domain name or use the ROCKPORT mark, and Respondent has registered the domain name with a famous mark. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name and Complainant’s mark to perpetrate fraud on customers.
Respondent registered and is using the <rockport-uk.com> domain name in bad faith. Respondent intentionally attempts to attract, for commercial gain and/or fraud, Internet users to the domain name by creating a likelihood of confusion with Complainant’s ROCKPORT trademark. Further, Respondent has also provided false contact information in connection with the registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, The Rockport Company, LLC, is a well-known global footwear company and is the owner of the internationally famous ROCKPORT trademark. Complainant has rights in the ROCKPORT mark based upon its multiple registrations of the mark with the USPTO and the OHIM (e.g. USPTO—Reg. No. 1,075,072, registered Oct. 11, 1977; OHIM—Reg. No. 004920914, registered Aug. 3, 2007). Respondent’s <rockport-uk.com> is confusingly similar to Complainant’s ROCKPORT mark.
Respondent, Janet Townsend, registered the <rockport-uk.com> domain name on March 16, 2017.
Respondent has no rights or legitimate interests in the <rockport-uk.com> domain name. Respondent uses the domain name and Complainant’s mark to perpetrate fraud on customers.
Respondent registered and is using the <rockport-uk.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 (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 has rights in the ROCKPORT mark under Policy ¶ 4(a)(i) based upon registration of the mark with the USPTO and the OHIM. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Respondent’s <rockport-uk.com> domain name is confusingly similar to the ROCKPORT mark, as the name contains the mark in its entirety and merely adds the term “uk” and the “.com” gTLD.
Respondent has no rights or legitimate interests in the <rockport-uk.com> domain name. Complainant has not authorized Respondent to use the ROCKPORT mark. Lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in said domain name per Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Further, registration of a domain name containing a long-registered, famous mark shows a lack of rights and legitimate interests in the domain name. See Chevron Intellectual Property LLC v. CHLEO TEMPLE, FA 1731844 (Forum June 16, 2017) (acknowledging the likelihood of a respondent’s lack of legitimate interests in a disputed domain name when the name incorporates a famous mark belonging to another entity).
Respondent failed to use the <rockport-uk.com> domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent uses the domain name to perpetrate fraud on customers. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Respondent’s domain name resolves to a website which purports to sell Complainant’s ROCKPORT-branded products. Complainant argues, based upon an email it received from a confused consumer, that Respondent does not act on purchase transactions.
Respondent offers counterfeit products at the website resolving from the <rockport-uk.com> domain name. Use of a domain name to offer counterfeit products shows bad faith per Policy ¶ 4(b)(iii) and (iv). See 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).”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)).
Respondent intentionally attempts to attract, for commercial gain and/or fraud, Internet users to the domain name by creating a likelihood of confusion with Complainant’s ROCKPORT trademark. Attempts to attract Internet users by creating a likelihood of confusion with a complainant’s trademark is evidence of bad faith per Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). Complainant contends Respondent uses the domain name and resolving website to display Complainant’s goods and receives payments without delivering goods.
Respondent provided false contact information in connection with the registration of the <rockport-uk.com> domain name. When Respondent’s provided postal address, “4619 Hampton Meadows, Bedford, MA,” is entered into Google maps or Apple Maps, a null result is returned. Use of false contact information in registering a domain name is evidence of bad faith registration per Policy ¶ 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering 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 <rockport-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 22, 2017
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