Topo Athletic, LLC v. vu hoang / topoathleticshoes
Claim Number: FA1906001848051
Complainant is Topo Athletic, LLC (“Complainant”), represented by Rachel M. Walsh of Goodwin Procter LLP, California, USA. Respondent is vu hoang / topoathleticshoes (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toporunningshoe.com>, registered with Tucows Domains Inc.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on June 14, 2019; the Forum received payment on June 14, 2019.
On June 17, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <toporunningshoe.com> domain name (the Domain Name) is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 June 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 11, 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@toporunningshoe.com. Also on June 21, 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 July 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 running gear including premier athletic footwear. Complainant operates a website at <topoathletic.com> that allows users to access information about Complainant and purchase its products. Complainant has rights in the TOPO ATHLETIC mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,456,303, registered Dec. 24, 2013). Respondent’s Domain Name is nearly identical and confusingly similar to Complainant’s mark as it contains the dominant portion of the TOPO ATHLETIC mark while adding the term “running shoe.”
Respondent has no rights or legitimate interests in the Domain Name. Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use in that it diverts internet traffic to Respondent’s web site, which copies the design and feel of Complainant’s website and purports to sell Complainant’s footwear products. Respondent is not commonly known by the Domain Name, and Complainant has not licensed or otherwise permitted Respondent to use the mark.
Respondent registered and uses the Domain Name in bad faith. Respondent uses the confusingly similar Domain Name to attract Internet traffic to its web site for commercial gain and passes off as Complainant, thereby disrupting Complainant’s business.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements in order to obtain an order cancelling or transferring the domain name:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 4.3, eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The TOPO ATHLETIC mark was registered to Complainant with the USPTO (Reg. No. 4,456,303) on December 24, 2013 (Amended Complaint Exhibit B). Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline 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 Domain Name is nearly identical and confusingly similar to Complainant’s mark as it incorporates the dominant portion of the TOPO ATHLETIC mark verbatim, merely adding the term “running shoe” and the “.com” generic top-level domain (“gTLD”). Adding descriptive terms and a gTLD to a mark does not sufficiently distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).), Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Indeed, adding the term ”running shoe” to the mark actually exacerbates the confusion, as “running shoe” describes Complainant’s product. Capital One Financial Corp. v. Domain Admin / Whois Privacy Corp., FA 1582803 (Forum Nov. 13, 2014) (finding that “the descriptive phrase ‘auto loan’ as included in [the <capitaloneautoloan.org>] domain name enhances the confusing similarity of the domain name.”). Finally, the WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the TOPO ATHLETIC mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to the respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or other fair use because it diverts Internet users to Respondent’s web site, which mimics Complainant’s web site and impersonates Complainant, (ii) Respondent is not commonly known by the Domain Name, and (iii) Respondent is not affiliated or associated with Complainant in any way and Complainant has not authorized or licensed Respondent to use its marks. These allegations are supported by competent evidence.
Complaint Exhibit D is a screenshot of Complainant’s web site. At the top of the first page it prominently displays the name and registered logo (USPTO Registration No. 4,828,462 registered October 6, 2015, per Complaint Exhibit B) of Complainant. Beneath that is an offering of athletic shoes that look very similar to those offered by Complainant on its web site at <topoathletic.com> (Complaint Exhibit E), but the prices for the shoes offered on Respondent’s web site are discounted some $20 to $60 per pair on shoes priced at about $69 to $140. One picture features a Phantom, which is a model offered by Complainant (Complaint Exhibit E). At the bottom of the last page of the web site is another Topo Mark and logo, and a false copyright notation reading “© 2019 Topo Athletic, Inc.” It is clear that Respondent’s web site copies and impersonates Complainant’s web site and is offering shoes advertised as Complainant’s. Complainant alleges on information and belief that Respondent is perpetrating fraud on Complainant and visitors to Respondent’s site, but it submitted no evidence to support this claim. These allegations as not proven and the Panel does not consider them. Still, the passing off and impersonation are clear. UDRP panels have often held that using a confusingly similar domain name to pass off as a complainant and sell its products is not using the domain name in connection with a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or making a legitimate noncommercial or fair use of it within the meaning of Policy ¶ 4(c)(iii). Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“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” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”), Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”).
The information submitted to the Forum by the registrar lists the registrant of the Domain Name as “vu hoang,” and the registrant organization as “topoathleticshoes.” The name of the individual registrant bears no resemblance to the Domain Name. UDRP panels have consistently held that, in the absence of evidence to the contrary, a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
The name of the registrant organization is very similar to the Domain Name and that of Complainant. Nevertheless, there is no evidence before the Panel of Respondent’s use of the name other than in connection with its web site which, as discussed earlier, engages in deceptive practices, and the address given for the registrant is in Hanoi, Vietnam. The Panel is satisfied that Respondent has not been commonly known by the Domain Name within the meaning of Policy ¶ 4(c)(ii). Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name).
Complainant states that Respondent is not affiliated or associated in any way with Complainant, and that Complainant has never licensed or authorized Respondent to use its marks. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which 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;
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has 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 of service on respondent’s web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv) and is clear evidence of bad faith registration and use. The facts of this case are similar to those in Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018), where the panel held, “Respondent appears to use a copycat page to solicit the sale of Complainant’s television, Internet, and voice communications services. It is unclear if the Respondent is actually providing Complainant’s services or is gathering personal information from website visitors while not providing any services. In either scenario, the Panel agrees that Respondent is attempting to commercially benefit from the use of Complainant’s SPECTRUM Marks in bad faith under Policy ¶ 4(b)(iv),” citing Charter Communications Holding Company, LLC v. Danish Michael, FA1809001805686 (Forum Oct. 5, 2018) (“Respondent attempts to commercially gain by passing off as Complainant and offering competing goods and services. Use of a domain name to pass off as complainant and offer competing goods and services is evidence of bad faith under Policy ¶ 4(b)(iv).”).
Second, Respondent is using the Domain Name to pass off as Complainant and offer products that are advertised as Complainant’s, at deep discounts, in competition with Complainant. This diverts business from Complainant and is thus naturally disruptive of Complainant’s business. It fits within the circumstances articulated by Policy ¶ 4(b)(iii) and is evidence of bad faith registration and use. Capital One Financial Corp. v. Michael Bock, FA1718603 (Forum Mar. 28, 2017) (finding bad faith registration because “…the disputed domain name and resolving website were designed to pass off as a product of Complainant for the purpose of business competition.”), Dell Inc. v. Prashant Chhibber, FA 1785651 (Forum June 1, 2018) (“Respondent offers support services related to Complainant’s products that are in direct competition with the services Complainant offers. The Panel finds that Respondent registered and used the domain names in bad faith per Policy ¶ 4(b)(iii).”).
Finally, although Complainant did not advance the argument, it is evident from the notoriety of Complainant’s TOPO ATHLETIC mark, from Respondent’s copying the dominant element of that mark verbatim into the Domain Name, and from Respondent’s web site mimicking and impersonating Complainant and purporting to offer the same types of goods offered by Complainant that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in May 2019 (WHOIS report submitted as Complaint Exhibit A shows registration date). Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <toporunningshoe.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
July 17, 2019
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