Red Wing Shoe Company, Inc. v. Contend / Vdffg Hcghs ghfgh / HHPKT / Jane Lucy
Claim Number: FA2101001929255
Complainant is Red Wing Shoe Company, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Contend / Vdffg Hcghs ghfgh / HHPKT / Jane Lucy (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <redwingshoes.buzz> and <redwingoutlet.buzz>, registered with NameSilo, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2021; the Forum received payment on January 21, 2021.
On January 21, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <redwingshoes.buzz> and <redwingoutlet.buzz> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 16, 2021 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@redwingshoes.buzz, postmaster@redwingoutlet.buzz. Also on January 25, 2021, 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 February 22, 2021, 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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE DOMAIN NAMES AND RESPONDENTS
Complainant alleges that both named Respondents and both Domain Names are effectively controlled by the same person. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Here, both Domain Names are registered at the same registrar (NameSilo), use the same name servers (DNSOWL), and were registered within days of each other (November 7 and 11, 2020). (Complaint Exhibits 5-A and 5-B). Further, both Domain Names resolve to an identical website. (Complaint Exhibits 7A-7D). Additionally, despite listing addresses in Los Angeles, California and Alabama, and New York, New York, the zip code used by Respondent, 85014, is the same. On these facts the Panel finds that both Domain Names are registered to the same person or entity and will proceed as to all of them. Except where the context requires otherwise, references to “Respondent” in this Decision, even though in the singular, refer to all named Respondents.
A. Complainant
Complainant has operated as a footwear company since 1905, specializing in manufacturing boots for the mining, farming, and logging industries. It has rights in the RED WING mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <redwingshoes.buzz> and <redwingoutlet.buzz> Domain Names are confusingly similar to Complainant’s RED WING mark, differing only by adding the generic term “shoes” or “outlet” and the “.buzz” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the Domain Names. It has no statutory or common law trademark rights in and is not commonly known by either Domain Name. It is not an authorized dealer of RED WING products, and Complainant has not licensed or authorized it to use its mark. Respondent does not use either Domain Name for any bona fide offer of goods or services, or for any legitimate noncommercial or fair use. Prior to Complainant’s filing an objection with the hosting company for Respondent’s web site, that web site featured Complainant’s name and logo and purported to offer Complainant’s products for sale. After that objection, Respondent removed Complainant’s name and logo and changed the products offered for sale there to third-party products.
Respondent registered and uses the Domain Names in bad faith. It attempts, for commercial gain, to attract Internet users to its website by causing confusion as to the source, sponsorship, affiliation or endorsement of that site, and disrupts Complainant’s competing business. Additionally, Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the RED WING mark.
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 to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The RED WING mark was registered to Complainant with the USPTO (Reg. No. 1,641,363) on April 16, 1991 (Complaint Exhibit 1-D). Complainant’s registration of its mark with the USPTO establishes its 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 <redwingshoes.buzz> and <redwingoutlet.buzz> Domain Names are confusingly similar to Complainant’s RED WING mark. They incorporate the mark in its entirety, merely adding the term “shoes” in one case and “outlet” in the other, along with the “.buzz” gTLD. These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). 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 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 Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the RED WING mark, in which Complainant has substantial and demonstrated rights.
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 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 the respondent of the dispute, the respondent’s use of, or 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;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent or 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 Names because (i) Respondent is not commonly known by the Domain Names, (ii) Complainant has not licensed or authorized Respondent to use its mark, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the web site resolving from them previously passed off as Complainant and currently features third-party products. These allegations are addressed as follows:
The information furnished to the Forum by the registrar lists “Contend / Vdffg Hcghs ghfgh” as the registrant of the Domain Name <redwingshoes.buzz> and “HHPKT / Jane Lucy” as the registrant of the Domain Name <redwlingoutlet.buzz>. Neither of these names bears any resemblance to the Domain Names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Names for the purposes of Policy ¶ 4(c)(ii).
Complainant states that it has never authorized or permitted Respondent to use its mark. 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.”).
Complaint Exhibits 7-A and 7-B are screenshots of the web site resolving from the Domain Names before Complainant filed its objection with the hosting company. The site prominently featured the name RED WING SHOES along with Complainant’s registered red bird-wing logo (Complaint Exhibit 1-A) and purports to offer Complainant’s boots and shoes for sale. The web site clearly posed as that of Complainant. Passing off as and purporting to sell a complainant’s goods is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business), Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Complaint Exhibits 7-C and 7-D are screenshots of the web site resolving from the Domain Names after Complainant’s objection. The site purports to offer women’s apparel under the name “Fashion.” It no longer passes off as Complainant’s site but Respondent is nevertheless using the Domain Names incorporating Complainant’s mark to attract Internet traffic to its web site for commercial gain. The fact that it purports to sell goods unrelated to those offered by Complainant is of no consequence, as using a confusingly similar domain name to offer both competing and unrelated products is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv). U.S. Franchise Sys. Inc. v. Howell, FA 152457 (Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding the mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is using the Domain Names 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 described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Complainant alleges that Respondent’s conduct falls within the circumstances described in Policy ¶ 4(b)(iii). That paragraph reads as follows: “you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor” (emphasis supplied). Respondent may earlier have been competing with Complainant and by using the Domain Names to attract Internet traffic to its web site, Respondent is clearly disrupting the business of Complainant. There is, however, another aspect of the concept of competition to be considered. In order for a respondent’s conduct to fall within Policy ¶ 4(b)(iii), the competition must exist before the domain name is registered. Otherwise, the respondent’s conduct would not fall within the language of ¶ 4(b)(iii), paraphrased as “you registered the domain name primarily to disrupt the business of a competitor.” The competition must exist before the registration. In this case the Complainant and the Respondent were not competitors when the Domain Names were registered in November 2020 (Complaint Exhibits 5-A and 5-B show the creation date). Any actual competition between them arose only after Respondent registered and began using the Domain Names. Even then, it is questionable whether disrupting the Complainant’s business was Respondent’s primary purpose in registering the Domain Names. On the contrary, the evidence strongly suggests that Respondent’s primary motive was not so much to harass or annoy an existing commercial adversary as it was to trade upon Complainant’s goodwill and reputation by creating confusion as to the source, sponsorship, affiliation or endorsement of its site, which is properly addressed under Policy ¶ 4(b)(iv). Respondent’s conduct does not fall within the circumstances stated in Policy ¶ 4(b)(iii).
That said, using a confusingly similar domain name to attract Internet traffic to a competing or unrelated web site wrongfully and unfairly disrupts the business of a complainant and is still bad faith. Both versions of Respondent’s web site disrupt Complainant’s business. The first was likely to cause disappointed customers to complain to Complainant about the treatment received from Respondent, and the second, offering goods completely unrelated to those associated with Complainant, would tend to make customers wonder if Complainant was no longer making boots and shoes or was no longer in business at all. 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), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name wrongfully to disrupt the business of a complainant is sufficient to meet the requirements of Policy ¶ 4(a)(iii). Respondent’s primary intent in registering and using the Domain Name is less important than the effect of his conduct. Respondent knew or should have known the disruptive impact his conduct would have upon Complainant’s business. Respondent went forward with his plans in spite of that and this demonstrates bad faith independently of Policy ¶ 4(b)(iii). Red Wing Shoe Company, Inc. v. wei zhang / Magdalena Jennifer / Mu Yan / Carolina Rodrigues / Fundacion Comercio Electronico, FA1911001873163 (Forum Jan. 3, 2020), Psyonix LLC v. Vasya Pupkin, FA2004001894087 (Forum June 3, 2020).
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names. Complainant’s RED WING mark has been used by it in commerce at least since 1977 (Complaint Exhibit 1-D). It is well known as the mark of a producer of boots and shoes. Respondent copied that mark exactly into the Domain Name and used that mark, along with Complainant’s red bird-wing logo, in its initial web site, which purported to offer many of Complainant’s own products for sale. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in an incorporated mark is 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 Names 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 <redwingshoes.buzz> and <redwingoutlet.buzz> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
February 23, 2021
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