Minnetonka Moccasin Company, Inc. v. Client Care / Web Commerce Communications Limited
Claim Number: FA2202001984802
Complainant is Minnetonka Moccasin Company, Inc. (“Complainant”), represented by Robert T. Grise of Vorys, Sater, Seymour and Pease LLP, Ohio, USA. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <minnetonkausa.com>, <minnetonkafrance.com>, and <minnetonka-uk.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2022; the Forum received payment on February 17, 2022.
On February 18, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <minnetonkausa.com>, <minnetonkafrance.com>, and <minnetonka-uk.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 February 23, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2022 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@minnetonkausa.com, postmaster@minnetonkafrance.com, postmaster@minnetonka-uk.com. Also on February 23, 2022, 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 March 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant, Minnetonka Moccasin Company, Inc., is involved in the business of footwear retail.
Complainant asserts rights in the MINNETONKA mark based upon registration with multiple trademark authorities, including the United States Patent and Trademark Office (“USPTO”).
Respondent’s <minnetonkausa.com>, <minnetonkafrance.com>, and <minnetonka-uk.com> domain names are confusingly similar to Complainant’s mark because they contain the MINNETONKA mark in its entirety, merely adding the terms “USA,” “FRANCE,” and “UK,” respectively, and the generic top-level domain (“gTLD”) “.com” to form the disputed domain names, as well as a hyphen in the third disputed domain name.
Respondent does not have rights or legitimate interests in the <minnetonkausa.com>, <minnetonkafrance.com>, or <minnetonka-uk.com> domain names. Respondent is not licensed or authorized to use Complainant’s MINNETONKA mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the at-issue domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to pass off as Complainant and purportedly offers Complainant’s goods for sale.
Respondent registered and uses the<minnetonkausa.com>, <minnetonkafrance.com>, and <minnetonka-uk.com> domain names in bad faith. Respondent uses the disputed domain names to pass off as Complainant and to purport to sell Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MINNETONKA mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the MINNETONKA trademark.
Respondent uses the domain names to address a website(s) mimicking Complainant’s genuine website that offers Complainant’s products for sale without authorization to do so.
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”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration along with multiple other national trademark registrations for its MINNETONKA trademark. Any of such registrations is sufficient to demonstrate Complainant’s rights in the MINNETONKA mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <minnetonkausa.com>, <minnetonkafrance.com>, and <minnetonka-uk.com> domain names each contain Complainant’s MINNETONKA trademark followed by a generic geographic term -either “usa,” “france,” or “uk” prefaced with a hyphen. Each domain name ends with the top-level domain name “.com.” The differences between Respondent’s domain names and Complainant’s MINNETONKA trademark are insufficient to distinguish any domain name from MINNETONKA for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <minnetonkausa.com>, <minnetonkafrance.com>, and <minnetonka-uk.com> domain names are each confusingly similar to Complainant’s MINNETONKA mark. 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).”); see also, Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding the addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Here, 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.
WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Client Care / Web Commerce Communications Limited.” The record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <minnetonkausa.com>, <minnetonkafrance.com>, or <minnetonka-uk.com> domain name. The Panel therefore concludes that Respondent is not commonly known by <minnetonkausa.com>, <minnetonkafrance.com>, or <minnetonka-uk.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <minnetonkausa.com>, <minnetonkafrance.com>, and <minnetonka-uk.com> domain names pose as being affiliated with or sponsored by Complainant. Browsing to such domain names returns webpages featuring Complainant’s mark and products and mimicking Complainant’s genuine website. Respondent’s use of the domain names in such manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also 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).”).
Given the forgoing and absent any contrary evidence from Respondent, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent uses the confusingly similar at-issue domain names to pass itself off as Complainant. In furtherance of confusing the domain names with Complainant’s MINNETONKA mark the domain names address a website(s) mimicking Complainant’s genuine website that includes Complainant’s mark, logo, and images. There, Respondent sells moccasins and footwear bearing Minnetonka’s trademarks or otherwise purporting to be authentic Minnetonka products. Using the at-issue domain names in this manner shows Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Wolverine Worldwide, FA 1507001627751 (citing G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”)); see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <minnetonkausa.com>, <minnetonkafrance.com>, and <minnetonka-uk.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 23, 2022
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