Wolverine World Wide, Inc. v. feng guo hao / hong ze wu
Claim Number: FA2206001999429
Complainant is Wolverine World Wide, Inc. (“Complainant”), represented by Malaina J Weldy of Warner Norcross + Judd LLP, Michigan, USA. Respondents are feng guo hao / hong ze wu (“Respondents”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sperryss.com>, <merrellss.com>, <chacooo.com> and <chaco-sandals.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2022. The Forum received payment on June 7, 2022.
On June 8, 2022, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <sperryss.com>, <merrellss.com>, <chacooo.com> and <chaco-sandals.com> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondents are the current registrants of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondents are bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) registration agreement, which is in Chinese, and have 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 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in both English and Chinese, setting a deadline of June 30, 2022 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@sperryss.com, postmaster@merrellss.com, postmaster@chacooo.com, postmaster@chaco-sandals.com. Also on June 10, 2022, the English and Chinese language Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
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”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant contends that the <sperryss.com>, <merrellss.com>, <chacooo.com> and <chaco-sandals.com> domain names are effectively controlled by the same person and/or entity, which is operating under several aliases. All four domain names have contact information with an address listed in Guang Dong, China and use the same registrar. Three of the four domain names have identical contact information and have the same first nine digits in their IP address and the same IP location of California – Los Angeles. Two of the domain names share an identical IP address. Additionally, all four domain names were registered within two months of each other, and three of the domain names were registered within one week of each other, with two registered on the same day.
In the absence of any evidence to the contrary, the above circumstances demonstrate sufficient commonality as between the domain names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Henceforth this decision will refer to feng guo hao / hong ze wu as “Respondent”.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
As noted, the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) registration agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding in relation to the <sperryss.com>, <merrellss.com>, <chacooo.com> and <chaco-sandals.com> domain names shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant has shown that the <sperryss.com> and <chacooo.com> domain names resolve to English language websites. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Chinese language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, Wolverine World Wide, Inc., distributes Sperry, Merrell, and Chaco brand products worldwide. Through its subsidiary SR Holdings, LLC, Complainant has rights in the SPERRY, MERRELL, and CHACO marks through registrations with multiple trademark agencies around the world including the United States Patent and Trademark Office (“USPTO”). Respondent’s <sperryss.com>, <merrellss.com>, <chacooo.com> and <chaco-sandals.com> domain names are identical or confusingly similar to Complainant’s marks.
Respondent lacks rights and legitimate interests in the <sperryss.com>, <merrellss.com>, <chacooo.com> and <chaco-sandals.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized or licensed Respondent to use its SPERRY, MERRELL, or CHACO marks in the domain names. Respondent does not use the domain names for any bona fide offering of goods or services, but instead sells goods competing with Complainant while passing itself off as Complainant. Additionally, two of the domain names do not resolve to active webpages.
Respondent registered and uses the <sperryss.com>, <merrellss.com>, <chacooo.com> and <chaco-sandals.com> domain names in bad faith. Respondent uses the <sperryss.com> and <chacooo.com> domain names to compete with Complainant’s business while creating the false impression of affiliation with Complainant. Respondent inactively holds the <merrellss.com> and <chaco-sandals.com> domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that, through its subsidiary SR Holdings, LLC, it has rights in the SPERRY, MERRELL, and CHACO marks through numerous registrations, including with the USPTO (e.g. Reg. No. 732,519, registered on June 5, 1962 for SPERRY; Reg. No. 1,337,440, registered on May 21, 1985 for MERRELL; and Reg. No. 1,894,639, registered on May 16, 1995 for CHACO).
The Panel finds Respondent’s <sperryss.com>, <merrellss.com>, <chacooo.com> and <chaco-sandals.com> domain names to be identical or confusingly similar to Complainant’s corresponding marks as each incorporates one of the marks in its entirety while adding the letters “s” or “oo” or “-sandals”, which do nothing to distinguish the domain names from the marks. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names 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 names, 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 names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <chaco-sandals.com> domain name was registered on February 15, 2022, the <sperryss.com> and <merrellss.com> domain names were registered on April 13, 2022, and the <chacooo.com> domain name was registered on April 21, 2022, in each case long after Complainant’s subsidiary registered the corresponding mark. The domain names <sperryss.com> and <chacooo.com> resolve to websites displaying Complainant’s corresponding mark and offering for sale goods of the kind distributed by Complainant. The domain names <merrellss.com> and <chaco-sandals.com> do not resolve to active websites.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <sperryss.com>, <merrellss.com>, <chacooo.com> and <chaco-sandals.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s SPERRY, MERRELL, and CHACO marks when Respondent registered the <sperryss.com>, <merrellss.com>, <chacooo.com> and <chaco-sandals.com> domain names.
The Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s active <sperryss.com> and <chacooo.com> websites, by creating a likelihood of confusion with Complainant’s marks as to the source of Respondent’s websites and of the goods promoted on those websites. This demonstrates registration and use of those domain names in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Further, although the <merrellss.com> and <chaco-sandals.com> domain names do not resolve to active websites, the Panel is satisfied that, having regard to Respondent’s conduct in relation to the other domain names, they were registered primarily for the purpose of disrupting the business of a competitor. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iii).
Complainant has established this element.
DECISION
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 <sperryss.com>, <merrellss.com>, <chacooo.com> and <chaco-sandals.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 7, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page