Edelman Shoe, Inc. v. Hulmiho Ukolen / Poste restante
Claim Number: FA1507001630741
Complainant is Edelman Shoe, Inc. ("Complainant"), represented by Myers Dill, Missouri, USA. Respondent is Hulmiho Ukolen / Poste restante ("Respondent"), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <samandlibby.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com ("Hebeidomains.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2015; the Forum received payment on July 27, 2015. The Complaint was received in both Finnish and English.
On July 28, 2015, Hebeidomains.com confirmed by email to the Forum that the <samandlibby.com> domain name is registered with Hebeidomains.com and that Respondent is the current registrant of the names. Hebeidomains.com has verified that Respondent is bound by the Hebeidomains.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 August 3, 2015, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of August 24, 2015 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@samandlibby.com. Also on August 3, 2015, the Finnish language 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 sells footwear, handbags, and other goods under the SAM & LIBBY trademark. The mark refers to Complainant's founder Sam Edelman and his wife Libby Edelman. It has been used continuously since at least as early as 1988, and is registered in the United States, the European Union, and many other jurisdictions. Complainant's SAM & LIBBY products are available for sale at Target stores, Amazon.com, FamousFootwear.com, and other well-known retailers.
Complainant contends that the disputed domain name <samandlibby.com> is identical or confusingly similar to its SAM & LIBBY mark; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant states that the domain name redirects users to various third-party websites advertising a variety of goods and services, and that some of these sites appear to contain adware or malware; Complainant alleges that consumers may believe that these sites or the products advertised on them are associated with Complainant, and asserts that Respondent profits by redirecting traffic to these sites. Complainant alleges further that Respondent has never been associated with Complainant; that no other company offers goods and services under the SAM & LIBBY mark; and that Complainant's mark was already well known prior to 1998, when the domain name was originally registered. Finally, Complainant states that the domain name is being offered for sale through a third-party website at a price of $6,750.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical 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 Panel notes that the Registration Agreement is written in Finnish, thereby making that the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English. See, e.g., TripAdvisor LLC v. Hulmiho Ukolen / Poste restante, FA 1584992 (Nat. Arb. Forum Dec. 8, 2014); Gap, Inc. v. Hulmiho Ukolen, FA 1507424 (Nat. Arb. Forum Aug. 23, 2013); see also Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) v. Hulmiho Ukolen / Domain Admin, Whois protection, D2015-0974 (WIPO Aug. 4, 2015) (noting use of English language in Respondent's correspondence); Giffits GmbH v. Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, D2015-0586 (WIPO June 22, 2015) (noting that neither "Hulmiho" nor "Ukolen" appears as a first name or surname in the Finnish Population Register).
The disputed domain name is identical to Complainant's registered trademark, but for the omission of spaces, the substitution of the word "and" for the ampersand symbol, and the addition of the ".com" top-level domain. None of these alterations are relevant for purposes of paragraph 4(a)(1) of the Policy. See, e.g., LFP IP, LLC v. Identity Consultancy, FA 969417 (Nat. Arb. Forum June 7, 2007) (finding <tipsandtricks.com> identical to TIPS & TRICKS). The Panel finds that the disputed domain name is identical 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 corresponds to Complainant's registered mark; it was registered in the name of a privacy service, cloaking Respondent's identity; and its only apparent use has been to redirect traffic to third-party websites, presumably for financial gain. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Ashley Furniture Industries, Inc. v. Amir Shirazi, FA 1628869 (Forum Aug. 17, 2015). 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 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)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(ii), bad faith may be shown by evidence that a domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." 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."
It appears that Respondent has offered the domain name for sale at a price considerably higher than its out-of-pocket costs. Respondent has been found to have registered and used domain names in bad faith in numerous previous proceedings under the Policy. See Good Chevrolet Inc. v. Hulmiho Ukolen / Poste restante, FA 1586324 (Nat. Arb. Forum Jan. 12, 2015) (noting Respondent's "history of bad faith"); Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Hulmiho Ukolen / Poste restante, FA 1572883 (Nat. Arb. Forum Sept. 11, 2014) (noting Respondent's "history of cybersquatting"). Respondent's use of the domain name to redirect Internet users seeking Complainant's trademark to third-party websites, presumably for commercial gain, is also indicative of bad faith. It is not clear to the Panel when the domain name was registered or acquired by Respondent (i.e., in 1998 or at some later date), nor whether it has ever been used in any other manner. As this information is within Respondent's knowledge, the Panel considers it appropriate to draw an adverse inference from its absence, see, e.g., Valeant International Bermuda v. DNS Administrator, FA 1573544 (Nat. Arb. Forum Sept. 15, 2014), and therefore infers that the disputed domain name was registered or acquired by Respondent for reasons relating to the manner in which it is presently being used. Accordingly, the Panel finds that Complainant has met its burden of proving that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <samandlibby.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 27, 2015
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