Mason Companies, Inc. v. eason lee
Claim Number: FA1403001550744
Complainant is Mason Companies, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is eason lee (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vipshoemall.com>, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 25, 2014; the National Arbitration Forum received payment on March 25, 2014.
On March 25, 2014, GODADDY.COM, LLC confirmed by email to the National Arbitration Forum that the <vipshoemall.com> 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 March 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@vipshoemall.com. Also on March 26, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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" 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant and its predecessors in interest have provided retail services in connection with footwear and clothing for at least one hundred years. Complainant holds trademark rights in SHOEMALL, SHOE MALL, and SHOEMALL.COM, and uses these marks in connection with a significant proportion of its retail sales. Complainant’s rights in these marks date back to at least as early as 1997. These marks and variations thereof are registered in the United States, Canada, and the European Community. Complainant claims that its marks are recognized by consumers throughout the world.
The disputed domain name <vipshoemall.com> was registered by Respondent on or about June 27, 2013. Complainant contends that this domain name is confusingly similar to its marks. Complainant further contends that Respondent has no rights or legitimate interests in the domain name, and that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant states that it has not authorized or licensed Respondent to use its marks for any purpose, and that the disputed domain name was registered long after Complainant acquired its trademark rights. Complainant states that Respondent is using the domain name to advertise shoes, the same products for which Complainant uses its marks, and accuses Respondent of using the domain name to trade on the goodwill of Complainant’s marks. Complainant notes that Respondent’s website is named “VIP Shoes,” and points out that Respondent could easily have selected a domain name that did not incorporate Complainant’s marks to use for this site. Complainant also accuses Respondent of using the domain name to engage in a scheme of collecting money from consumers and failing to send products. Complainant states that it has received complaints from its own customers who have mistakenly believed that Respondent’s website is associated with Complainant, and claims that its reputation has suffered as a result of such confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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(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.”).
The disputed domain name includes Complainant’s registered mark SHOEMALL.COM in its entirety, prefixed by the abbreviation “vip,” which presumably stands for “very important person.” This addition does not adequately distinguish the domain name from Complainant’s mark. See, e.g., Crocs Inc. v. Sen Wu, D2011-1493 (WIPO Dec. 11, 2011) (finding <vipcrocs.com> confusingly similar to CROCS); LEGO Juris A/S v. Ho Nim, D2010-0931 (WIPO July 23, 2010) (finding <viplego.com> confusingly similar to LEGO). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark without authorization, and it is being used in an infringing and possibly fraudulent manner. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent registered a domain name that incorporates Complainant’s mark, and is using the domain name in an infringing and likely fraudulent manner. Respondent’s conduct obviously targets Complainant’s mark and evinces bad faith under both of these provisions of the Policy. See, e.g., Mason Companies, Inc. v. Katona Huba, FA 1527913 (Nat. Arb. Forum Dec. 30, 2013) (finding bad faith based upon competing use of domain name containing SHOEMALL mark).
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vipshoemall.com> domain name be TRANSFERRED from Respondent to Complainant..
David E. Sorkin, Panelist
Dated: April 23, 2014
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