Allen Edmonds Corporation a/k/a Allen Edmonds Corporation v. linyi wong
Claim Number: FA1812001822849
Complainant is Allen Edmonds Corporation a/k/a Allen Edmonds Corporation (“Complainant”), represented by Caroline Chicoine of HUSCH BLACKWELL LLP, Missouri, USA. Respondent is linyi wong (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allened-shoes.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 27, 2018; the Forum received payment on December 27, 2018.
On December 27, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <allened-shoes.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 January 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2019 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@allened-shoes.com. Also on January 4, 2019, 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 January 27, 2019, 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, Allen Edmonds Corporation a/k/a Allen Edmonds Corporation, uses their mark ALLEN EDMONDS in connection with footwear and accessories. Complainant has rights in the ALLEN EDMONDS mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., ALLEN EDMONDS - Reg. No. 822,911, registered Jan. 24, 1967). Respondent’s <allened-shoes.com> domain name is confusingly similar to Complainant’s ALLEN EDMONDS mark, as the domain name incorporates the mark with the EDMONDS portion of the mark in an abbreviated form; and Respondent adds the descriptive word “shoes” and a generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <allened-shoes.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ALLEN EDMONDS 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 is using the disputed domain name to impersonate Complainant and purportedly offer Complainant’s products at extremely reduced prices.
Respondent registered and is using the <allened-shoes.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Specifically, Respondent is using the disputed domain name to disrupt Complainant’s business by offering to sell Complainant’s products at a reduced price. Further, Respondent had actual knowledge of Complainant’s rights in the ALLEN EDMONDS mark prior to registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Allen Edmonds Corporation a/k/a Allen Edmonds Corporation, uses their mark ALLEN EDMONDS in connection with footwear and accessories. Complainant has rights in the ALLEN EDMONDS mark based on registration with the USPTO (e.g., ALLEN EDMONDS - Reg. No. 822,911, registered Jan. 24, 1967). Respondent’s <allened-shoes.com> domain name is confusingly similar to Complainant’s ALLEN EDMONDS mark.
Respondent registered the <allened-shoes.com> domain name on July 13, 2018.
Respondent has no rights or legitimate interests in the <allened-shoes.com> domain name. Respondent is using the disputed domain name to impersonate Complainant and purportedly offer Complainant’s products at extremely reduced prices.
Respondent registered and is using the <allened-shoes.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 ALLEN EDMONDS mark under Policy ¶ 4(a)(i) based upon registration of the mark with the USPTO. See DIRECTV, LLC v. The Pearl ine Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <allened-shoes.com> domain name is confusingly similar to the ALLEN EDMONDS mark, as the domain name incorporates the mark with the EDMONDS portion in an abbreviated form and adds the descriptive wording “shoes,” a hyphen, and (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <allened-shoes.com> domain name. Complainant has not authorized Respondent to use the ALLEN EDMONDS mark. The WHOIS information of record identifies the registrant of the disputed domain name as “linyi wong.” Therefore, Respondent is not commonly known by the disputed domain name
Respondent has failed to use the <allened-shoes.com> domain name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Instead, Respondent is using the disputed domain name to impersonate Complainant and purportedly offer Complainant’s products at extremely reduced prices. Use of a domain name to pass off as a complainant for the unauthorized sale of a complainant’s goods shows a lack of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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 also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”).
Respondent’s bad faith is shown by its use of the <allened-shoes.com> domain name to disrupt Complainant’s business by offering to sell Complainant’s products at a reduced price. Use of a domain name to pass off as and disrupt a complainant’s business for the unauthorized sale of complainant’s goods demonstrates bad faith per Policy ¶¶ 4(b)(iii) or (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”), see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Respondent’s use of the ALLEN EDMONDS mark throughout the website shows actual knowledge of Complainant’s rights in the mark. A respondent’s actual knowledge of a complainant’s rights to a mark when registering a disputed domain name indicates bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
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 <allened-shoes.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 9, 2019
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