Allen-Edmonds Shoe Corporation v. Van's Men's Shoe Shop c/o Larry Reese a/k/a menshoenet.com
Claim Number: FA0601000624479
Complainant is Allen-Edmonds Shoe Corporation (“Complainant”), represented by Joseph J. Jochman of Andrus, Scales, Starke & Sawall, LLP, Suite 1100, 100 East Wisconsin Avenue, Milwaukee, WI 53202. Respondent is Van's Men's Shoe Shop c/o Larry Reese a/k/a menshoenet.com (“Respondent”), 275 W. Wisconsin Ave 1001-01, Milwaukee, WI 53203.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <allenedmundsshoe.com>, <allenedmondshoe.com>, <allen-edmunds.com>, <allen-edmondsshoes.com>, <allen-edmonds-shoes.com>, <allenedmondsshoe.com>, <allenedmundsshoes.com> and <allenedmondsfootwear.com>. The <allenedmundsshoe.com>, <allenedmondshoe.com>, and <allenedmondsfootwear.com> domain names are registered with Go Daddy Software, Inc. The <allenedmundsshoes.com>, <allen-edmunds.com>, <allen-edmondsshoes.com>, <allen-edmonds-shoes.com> and <allenedmondsshoe.com> domain names are registered with Intercosmos Media Group.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 12, 2006.
On January 11, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <allenedmundsshoe.com>, <allenedmondshoe.com>, and <allenedmondsfootwear.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc., registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 11, 2006, Intercosmos Media Group confirmed by e-mail to the National Arbitration Forum that the <allenedmundsshoes.com>, <allen-edmunds.com>, <allen-edmondsshoes.com>, <allen-edmonds-shoes.com> and <allenedmondsshoe.com> domain names are registered with Intercosmos Media Group and that Respondent is the current registrant of the names. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 6, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@allenedmundsshoe.com, postmaster@allenedmondshoe.com, postmaster@allen-edmunds.com, postmaster@allen-edmondsshoes.com, postmaster@allen-edmonds-shoes.com, postmaster@allenedmondsshoe.com, postmaster@allenedmundsshoes.com and postmaster@allenedmondsfootwear.com by e-mail.
On February 1, 2006, Respondent submitted a request for additional time to submit a response pursuant to National Arbitration Forum Supplemental Rule #6. An Extension of Time to Respond was issued, setting a new deadline of February 21, 2006 by which Respondent could file a Response to the Complaint.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <allenedmundsshoe.com>, <allenedmondshoe.com>, <allen-edmunds.com>, <allen-edmondsshoes.com>, <allen-edmonds-shoes.com>, <allenedmondsshoe.com>, <allenedmundsshoes.com> and <allenedmondsfootwear.com> domain names are confusingly similar to Complainant’s ALLEN EDMONDS mark.
2. Respondent does not have any rights or legitimate interests in the <allenedmundsshoe.com>, <allenedmondshoe.com>, <allen-edmunds.com>, <allen-edmondsshoes.com>, <allen-edmonds-shoes.com>, <allenedmondsshoe.com>, <allenedmundsshoes.com> and <allenedmondsfootwear.com> domain names.
3. Respondent registered and used the <allenedmundsshoe.com>, <allenedmondshoe.com>, <allen-edmunds.com>, <allen-edmondsshoes.com>, <allen-edmonds-shoes.com>, <allenedmondsshoe.com>, <allenedmundsshoes.com> and <allenedmondsfootwear.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Allen-Edmonds Shoe Corporation, is a
manufacturer and distributor of quality shoes.
Complainant has been in the shoe business since 1936. Since 1967, Complainant has used the ALLEN
EDMONDS mark for men’s shoes.
Complainant holds a registration for the mark with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 822,911 issued January 24,
1967, renewed January 24, 1987).
Complainant has advertised and sold its products through its
website at the <allenedmonds.com> and <allenedmondsshoes.com>
domain names.
Respondent registered the <allenedmundsshoes.com> and <allen-edmondsshoes.com> domain names on December 31, 2002; the <allen-edmonds-shoes.com> domain name on March 25, 2003; the <allen-edmunds.com> domain name on May 11, 2004; the <allenedmondsshoe.com> domain name on June 13, 2004; the <allenedmundsshoe.com> domain name on September 7, 2005; <allenedmondshoe.com> domain name on September 11, 2005; and the <allenedmondsfootwear.com> domain name on September 26, 2005. The domain names resolve to Respondent’s competing website at the <menshoenet.com> domain name. Additionally, Respondent is a former distributor of Complainant’s products.
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."
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(e), 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.”).
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.
Complainant has submitted evidence of its registration of the ALLEN EDMONDS mark with the USPTO. The Panel finds that Complainant’s registration is sufficient to show Complainant’s rights in the mark as required under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <allenedmondshoe.com>, <allen-edmondsshoes.com>, <allen-edmonds-shoes.com>, <allenedmondsshoe.com> and <allenedmondsfootwear.com> domain names incorporate Complainant’s ALLEN EDMONDS mark in its entirety. The <allenedmundsshoe.com>, <allen-edmunds.com>, and <allenedmundsshoes.com> domain names incorporate a simple misspelling of Complainant’s mark in which the “o” is replaced with a “u,” rendering the pronunciation identical. In addition, the domain names add hyphens and common terms that have an obvious relationship with Complainant’s business in men’s footwear. Adding common terms and hyphens to Complainant’s registered mark or a simple misspelling of the mark does not overcome a showing of confusing similarity under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c). Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests). The Panel finds Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant asserts that Respondent has not been commonly known by any of the disputed domain names. Furthermore, nothing in the WHOIS information suggests that Respondent is commonly known by the domain names. Thus, due to Respondent’s failure to provide any evidence to rebut Complainant’s assertions, the Panel determines that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
According to the Complaint, Respondent is a competitor of Complainant and is using the disputed domain names to divert Internet users to Respondent’s competing website offering men’s shoes. Use of Complainant’s mark or a confusingly similar version thereof to offer competing products does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is using the disputed domain names, which include Complainant’s ALLEN EDMONDS mark and confusingly similar versions thereof, to operate Respondent’s competing website. Respondent’s use of confusingly similar variations of Complainant’s mark to attract Internet users searching for Complainant’s men’s shoes to Respondent’s competing business suggests that Respondent registered the disputed domain names to disrupt Complainant’s business. These circumstances are evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
By using Complainant’s ALLEN EDMONDS mark and confusingly similar versions thereof to operate a competing website, Respondent is attempting to benefit from the goodwill associated with Complainant’s mark. Internet users searching for Complainant’s products and services under the ALLEN EDMONDS mark may become confused upon reaching Respondent’s website, which offers similar goods and services. Respondent’s registration and use of the disputed domain names to capitalize on the goodwill acquired by Complainant in its mark is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <allenedmundsshoe.com>, <allenedmondshoe.com>, <allen-edmunds.com>, <allen-edmondsshoes.com>, <allen-edmonds-shoes.com>, <allenedmondsshoe.com>, <allenedmundsshoes.com> and <allenedmondsfootwear.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 14, 2006
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