DECISION

 

Caleres, Inc. v. Domain Admin / Whoisprotection.cc

Claim Number: FA2205001996925

 

PARTIES

Complainant is Caleres, Inc. (“Complainant”), represented by Caroline Chicoine of HUSCH BLACKWELL LLP, Missouri, USA.  Respondent is Domain Admin / Whoisprotection.cc (“Respondent”), Malaysia.

 

REGISTRARS AND DISPUTED DOMAIN NAMES

The domain names at issue are <naturalizeruk.com>, <naturalizercanada.com>, <naturalizerphilippines.com>, <naturalizersouthafrica.com>, <naturalizerindia.com>, <naturalizersingapore.com>, <naturalizermexico.com> and <naturalizershoesnz.com>, registered with Alibaba.Com Singapore E-Commerce Private Limited; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.

 

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 18, 2022; the Forum received payment on May 18, 2022.

 

On May 23, 2022, Alibaba.Com Singapore E-Commerce Private Limited; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <naturalizeruk.com>, <naturalizercanada.com>, <naturalizerphilippines.com>, <naturalizersouthafrica.com>, <naturalizerindia.com>, <naturalizersingapore.com>, <naturalizermexico.com>, and <naturalizershoesnz.com> domain names are registered with one or other of them and that Respondent is the current registrant of the names.  The Registrars also verified that Respondent is bound by their registration agreements 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 May 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@naturalizeruk.com, postmaster@naturalizercanada.com, postmaster@naturalizerphilippines.com, postmaster@naturalizersouthafrica.com, postmaster@naturalizerindia.com, postmaster@naturalizersingapore.com, postmaster@naturalizermexico.com, postmaster@naturalizershoesnz.com.  Also on May 24, 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 June 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in NATURALIZER.  Complainant holds a national registration for that trademark and submits that the domain names are confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant alleges that Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.      Complainant sells footwear by reference to the trademark, NATURALIZER, registered with the United States Patent and Trademark Office (“USPTO”) as  Reg. No. 780,404, from November 17, 1964;

 

2.      the disputed domain names were all registered on May 25, 2021 and have been used in ways described later; and

 

3.      there is no association between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating its trademark.

 

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 based on 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.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[i].  Complainant therefore has rights since it provides proof of its registration of the trademark with the USPTO, a national trademark authority.   

 

The disputed domain names combine the trademark with one or other of the country names or abbreviations, “uk”, “canada”, “philippines”, “south africa”, “india”, “singapore”, “mexico” and “nz”, together with the “.com” generic top-level domain (“gTLD”). Additionally, one of the disputed domain names adds the descriptive word, “shoes”.  None of those additions is of distinctive value and the trademark remains the dominant and memorable part of each disputed domain name.[ii] 

 

The Panel finds that the domain names are confusingly similar to Complainant’s trademark for the purposes of this aspect of the Policy[iii]. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your 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;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are 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 need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].

 

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.”  In the Complaint it was fairly assumed that there may have been different domain name owners and so the submissions include the request that “[i]f, after the true owners of the Disputed Domain Names are disclosed, it appears any of the Disputed Domain Names should not be consolidated into this UDRP, Complainant is happy to separate any such domain names into its own complaint.” 

 

That becomes unnecessary since, in consequence of these proceedings, the Registrar verified that “Whoisprotection.cc/Domain Admin” was in fact the registrant of each of the disputed domain names.  That name does not provide any indication that Respondent might be commonly known by any of the disputed domain names.[v]  There is no evidence that Respondent has any trademark rights.  Complainant states that there is no association between the parties and Respondent has no authority to use the trademark.

 

The evidence accompanying the Complaint satisfies the Panel that there has been no legitimate or bona fide use of the domain names.  In summary, the names either resolve to websites which display Complainant’s trademark or a logo rendition thereof; show product material associated with Complainant; or have been linked with the use of phishing emails and fraudulent, unfulfilled, sales of goods which Internet users had thought originated from Complainant’s business.

 

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names[vi].  The onus shifts to Respondent, and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

(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 who 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, provided that Respondent has engaged in a pattern of such conduct; 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 website or location or of a product or service on the site or location.’

 

The Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The Panel has already found the disputed domain names to be confusingly similar to the trademark.  The Panel accepts Complainant’s assertion that the resolving websites exist for commercial gain in one form or another.  Further, the phishing emails were clearly aimed at illicit commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the disputed domain names to attract, for commercial gain, internet users to its websites or online location by creating a likelihood of confusion with as to the source, sponsorship, affiliation, or endorsement of those websites by implying to internet users that they will reach Complainant’s website, or were dealing with Complainant for the purpose of purchase of Complainant’s goods.[vii]

 

Panel finds that Complainant has satisfied the third and final element of the Policy.

 

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 <naturalizeruk.com>, <naturalizercanada.com>, <naturalizerphilippines.com>, <naturalizersouthafrica.com>, <naturalizerindia.com>, <naturalizersingapore.com>, <naturalizermexico.com> and <naturalizershoesnz.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated:  June 22, 2022

 



[i] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).

[ii] See, for example, Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284 finding <bhpbillitonusa.com> confusingly similar to BHP BILLITON.

[iii] See, for example, PAIGE, LLC v. Chris Kimber, FA 1714208 (Forum Mar. 9, 2017) reading the addition of country name identifiers; Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).

[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).

larly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).

[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).

[vi] See, for example, CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant.  In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name p

ursuant to Policy ¶ 4(c)(ii).”).  

[vii] See, for example, Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) finding the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶ 4(c)(iii); Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).

[vii] See, for example, Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) holding that the respondent registered and used <myspacebot.com> in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme.

 

 

 

 

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