SR Holdings, LLC v. Lisa Katz / Domain Protection LLC
Claim Number: FA1808001800627
Complainant is SR Holdings, LLC (“Complainant”), represented by Amber M Underhill of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sperryoutlet.com>, registered with Sea Wasp, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2018; the Forum received payment on August 8, 2018.
On August 10, 2018, Sea Wasp, Llc confirmed by e-mail to the Forum that the <sperryoutlet.com> domain name is registered with Sea Wasp, Llc and that Respondent is the current registrant of the name. Sea Wasp, Llc has verified that Respondent is bound by the Sea Wasp, 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 August 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2018 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@sperryoutlet.com. Also on August 17, 2018, 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 September 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed 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 is a wholly owned subsidiary of Wolverine World Wide, Inc. Complainant and its parent are one of the world’s leading sellers of high quality footwear, including SPERRY brand footwear, which has been in use, sold, and marketed since at least 1939. Complainant has rights in the SPERRY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 732,519, registered June 5, 1962). Respondent’s <sperryoutlet.com> domain name is identical or confusingly similar to Complainant’s mark as it contains the entire SPERRY mark and adds the generic term “outlet” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <sperryoutlet.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the resolving webpage for the disputed domain name is a parked webpage containing links to Complainant’s business along with Complainant’s competitors.
Respondent registered and uses the <sperryoutlet.com> domain name in bad faith. Respondent, while stating that the domain name is not for sale, stated that it would “look at an outlandishly high offer.” Further, Respondent registered the domain name to illegitimately profit from the goodwill associated with Complainant’s SPERRY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a wholly owned subsidiary of Wolverine World Wide, Inc. Complainant and its parent are one of the world’s leading sellers of high quality footwear, including SPERRY brand footwear, which has been in use, sold, and marketed since at least 1939. Complainant has rights in the SPERRY mark through its registration of the mark with the USPTO (e.g. Reg. No. 732,519, registered June 5, 1962). Respondent’s <sperryoutlet.com> domain name is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <sperryoutlet.com> domain name. The resolving webpage for the disputed domain name is a parked webpage containing links to Complainant’s business along with Complainant’s competitors.
Respondent registered and uses the <sperryoutlet.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 SPERRY mark through its registration of the mark with the USPTO (e.g. Reg. No. 732,519, registered June 5, 1962).
Respondent’s <sperryoutlet.com> domain name is confusingly similar to Complainant’s mark as it contains the entire SPERRY mark and adds the generic term “outlet” and the “.com” gTLD.
Respondent has no rights or legitimate interests in the <sperryoutlet.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Domain Protection LLC” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the SPERRY mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Therefore, Respondent is not commonly known by the <sperryoutlet.com> domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to resolve in a website that contains a series of hyperlinks redirecting users to services that directly compete with Complainant, presumably to commercially benefit from pay-per-click fees. Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Respondent, while stating that the <sperryoutlet.com> domain name is not for sale, stated that it would “look at an outlandishly high offer.” Offering a confusingly similar domain name for sale can show bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
Respondent registered and uses the <sperryoutlet.com> domain name in bad faith because the resolving webpage displays links to Complainant’s competitors to illegitimately profit from the goodwill associated with Complainant’s SPERRY mark. Offering links to competing products or services for a respondent’s profit can demonstrate bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sperryoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 24, 2018
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