DECISION

 

Red Wing Shoe Company, Inc. v. Markus Ackermann

Claim Number: FA2102001931601

 

PARTIES

Complainant is Red Wing Shoe Company, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA.  Respondent is Markus Ackermann (“Respondent”), Germany.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <redwingnorge.com>, registered with MAT BAO CORPORATION.

 

PANEL

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.

 

Ho Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 10, 2021; the Forum received payment on February 10, 2021.

 

On February 26, 2021, MAT BAO CORPORATION confirmed by e-mail to the Forum that the <redwingnorge.com> domain name is registered with MAT BAO CORPORATION and that Respondent is the current registrant of the name. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO CORPORATION 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 March 3, 2021, the Forum served the Complaint and all Annexes, including a Vietnamese Written Notice of the Complaint, setting a deadline of March 23, 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@redwingnorge.com.  Also on March 3, 2021, the Vietnamese 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 March 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS

The Panel notes that the Registration Agreement is written in Vietnamese, thereby making the language of the proceedings in Vietnamese. Complainant did not submit a Vietnamese language complaint, but argues that since the disputed domain name incorporates the RED WING mark, an English mark, while the resolving website features words in English, the Complainant should be presumed to understand and the proceedings should continue in English.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings should be conducted in English.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant manufactures and sells boots and various footwear and accessories. Complainant has rights in the RED WING mark through its registration with numerous trademark authorities throughout the world (e.g. United States Patent and Trademark Office (“USPTO”) Reg. 1,244,602, registered Jul. 5, 1983; Norwegian Industrial Property Office (“NIPO”) Reg. 19,901,484, registered Oct. 22, 1992). The disputed domain name is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the geographic word “norge”, along with the “.com” generic top-level domain (“gTLD”).

 

ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its RED WING mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant and runs a phishing scheme under the guise of a counterfeit products marketplace at the disputed domain name’s resolving website.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant and diverting internet users to a website selling counterfeit goods. Respondent registered the disputed domain name with knowledge of Complainant’s rights in the RED WING mark. Respondent phishes for user information on the disputed domain name’s resolving website.

 

B. Respondent

Respondent did not submit a response in this proceeding.

 

FINDINGS

1.    The disputed domain name was registered on July 15, 2020.

 

2.    Complainant has established rights in the RED WING mark through its registration with numerous trademark authorities throughout the world (e.g. United States Patent and Trademark Office (“USPTO”) Reg. 1,244,602, registered Jul. 5, 1983; Norwegian Industrial Property Office (“NIPO”) Reg. 19,901,484, registered Oct. 22, 1992).

 

3.    The disputed domain name’s resolving website features Complainant’s mark and counterfeit boots and footwear accessories for sale.

 

4.    The disputed domain name’s resolving website features an option to pay for the items on the website which the payment does not appear to process.

 

DISCUSSION

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the RED WING mark through its registration with numerous trademark authorities throughout the world (e.g. USPTO Reg. 1,244,602, registered Jul. 5, 1983; NIPO Reg. 19,901,484, registered Oct. 22, 1992). Registration with multiple worldwide trademark authorities is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Therefore, the Panel finds Complainant has established rights in the RED WING mark under Policy ¶ 4(a)(i).

 

Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark. Under Policy ¶ 4(a)(i), adding a geographic term, along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). The disputed domain name incorporates Complainant’s RED WING mark in its entirety and adds the geographic term “norge”, which translates to Norway, along with the “.com” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).

 

Complainant argues that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its RED WING mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence may show that a Complainant never authorized or licensed Respondent to use its mark in the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,”  Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS of record identifies Respondent as “Markus Ackerman”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its RED WING mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as Complainant and divert internet users to a phishing website that operates under the guise of offering counterfeit items is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Forum Nov. 11, 2004) (defining “phishing” as fooling “Internet users into sharing personal financial data so that identities can be stolen, fraudulent bills are run up, and spam e-mail is sent”). Complainant provides screenshots of the disputed domain name’s resolving website, which features Complainant’s mark and what appears to be boots and other similar products of Complainant’s for sale. Complainant also provides a screenshot of a message that flashes when credit card information is input into the payment section, which does not accept the payment and asks the user to pay again. Complainant argues this likely means the website is collecting user information input under the guise of payment. The Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the disputed domain name for bad faith disruption for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as Complainant and divert internet users to a website offering counterfeit products is generally considered bad faith disruption for commercial gain. See  Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use); see also  H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which features Complainant’s mark and allegedly counterfeit boots and footwear accessories for sale. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).

 

Complainant contends that Respondent registered the disputed domain name in bad faith as it had notice of Complainant’s rights in the RED WING mark at the time of registration. Under Policy ¶ 4(a)(iii), while constructive knowledge is generally insufficient in demonstrating bad faith, actual knowledge may be sufficient, and may be demonstrated by Respondent registering a disputed domain name that incorporates a well-known and/or registered mark, as well as Respondent’s use of the disputed domain name’s resolving website. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel recalls that the disputed domain name incorporates Complainant’s well-known RED WING mark in its entirety, while the disputed domain name features Complainant’s mark and allegedly counterfeit boots and footwear accessories for sale. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s mark at the time of registration of the disputed domain name. Therefore, the Panel finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

Complainant further contends that Respondent registered and uses the disputed domain name in bad faith by phishing for user information. Using a disputed domain name’s resolving website to phish for Internet user information is generally considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Citigroup Inc. v. Domain MANAGER / Domain Brokers, FA1505001621817 (Forum July 13, 2015) (finding that the respondent’s use of a survey, in which Internet users were encouraged to enter personal information to complete, indicated bad faith registration and use pursuant to Policy ¶ 4(a)(iii)). The Panel recalls Complainant’s screenshot of the disputed domain name’s resolving website, which features an option to pay for the items on the website, which Complainant argues is actually a guise to collect user information as the payment does not appear to process. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <redwingnorge.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Ho Hyun Nahm, Esq., Panelist

Dated:  April 7, 2021

 

 

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