SHOES WEST, INC. v. Suncailong
Claim Number: FA2210002016367
Complainant is SHOES WEST, INC. (“Complainant”), represented by Julie Bolliger of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Suncailong (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taosshoesforwomen.com>, registered with Xiamen ChinaSource Internet Service Co., Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on October 17, 2022; Forum received payment on October 17, 2022.
On October 18, 2022, Xiamen ChinaSource Internet Service Co., Ltd confirmed by e-mail to Forum that the <taosshoesforwomen.com> domain name is registered with Xiamen ChinaSource Internet Service Co., Ltd and that Respondent is the current registrant of the name. Xiamen ChinaSource Internet Service Co., Ltd has verified that Respondent is bound by the Xiamen ChinaSource Internet Service Co., Ltd 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 October 19, 2022, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of November 8, 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, as well as to the attention of postmaster@taosshoesforwomen.com. Also on October 19, 2022, the Chinese and English language 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Chinese. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:
i. the domain name wholly contains English words;
ii. the content of the website resolving from the domain name is rendered entirely in English;
iii. the currency options identified on the resolving website include US dollars but not Chinese yuan;
iv. these facts demonstrate Respondent’s proficiency in English;
v. Complainant is not conversant with Chinese; and
vi. translating the documents necessary to prosecute this
proceeding in Chinese would put Complainant to a substantial financial burden and unnecessarily delay this proceeding.
Respondent does not contest any of these assertions. For that reason, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent was familiar with English).
Accordingly, this proceeding will be conducted in the English language.
A. Complainant
Beginning in 2005, Complainant has built a business devoted to the marketing of apparel and footwear, including women’s shoes, in the United States, Canada and Australia.
Complainant holds a registration for the trademark TAOS, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,009,106, registered October 25, 2005, and renewed as of June 15, 2015.
Respondent registered the domain name <taosshoesforwomen.com> on June 16, 2022.
The domain name is confusingly similar to Complainant’s TAOS trademark.
Respondent has not been commonly known by the domain name.
Respondent is not authorized to use Complainant’s TAOS mark.
Respondent has neither rights to nor legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the TAOS mark when it registered the domain name.
Respondent is not using the domain name in connection with a bona fide offering of goods or services.
Instead, Respondent uses the domain name to resolve to a website promoting the sale of clothing-related goods, including women’s shoes.
Respondent’s resolving website displays Complainant’s doing business as name, “Taos Footwear,” as well as Complainant’s TAOS mark, the latter rendered in the stylization of the mark employed in Complainant’s marketing messages.
The same website also features photos of women’s shoes which appear to have been directly copied from Complainant’s official website.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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”).
By virtue of its registration of the TAOS trademark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy¶4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy¶4(a)(i), we conclude from a review of the record that Respondent’s <taosshoesforwomen.com> domain name is confusingly similar to Complainant’s TAOS trademark. The domain name incorporates the mark in its entirety, with only the addition of the expression “shoes for women,” which describes the nature of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of a UDRP complainant a gTLD and the generic term “finance,” which described that complainant’s financial services business conducted under the mark, did not distinguish the resulting domain name from the mark under Policy¶4(a)(i)).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <taosshoesforwomen.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <taosshoesforwomen.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the TAOS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Suncailong,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without any objection from Respondent, that Respondent uses the challenged domain name to resolve to a website promoting the sale of clothing-related goods, including women’s shoes, as well as that Respondent’s resolving website displays Complainant’s doing business as name, “Taos Footwear,” together with Complainant’s TAOS mark, the latter rendered in the stylization of the mark used in Complainant’s marketing messages, and that the same website features photos of women’s shoes which appear to have been directly copied from Complainant’s official website. In the circumstances described in the Complaint, we may comfortably presume that Respondent employs the domain name as alleged in pursuit of financial gain. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy¶4(c)(i) nor a legitimate noncommercial or fair use of it under Policy¶4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Amer. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that a respondent’s attempt to pass itself off as a UDRP complainant online, in a blatant unauthorized use of that complainant’s mark, was evidence that that respondent had neither rights to nor legitimate interests in a disputed domain name within the compass of either Policy¶4(c)(i) or Policy¶4(c)(iii).
See also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007):
Because respondent … is … attempting to pass itself off as complainant, presumably for financial gain, the Panel finds that respondent is not using the … domain name for 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).
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy¶4(a)(ii).
We are persuaded by the evidence before us that Respondent’s use of the <taosshoesforwomen.com> domain name disrupts Complainant’s business. Under Policy¶4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, block.one v. Negalize Interactive Things, FA 1798280 (Forum August 21, 2018):
Offering links to competing products or services can demonstrate bad faith under Policy [¶] 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the TAOS mark when it registered the disputed domain name. This is a further showing of Respondent’s bad faith in registering that domain name. See, for example, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent had knowledge of a UDRP complainant's rights in a mark when it registered a confusingly similar domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy¶4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby GRANTED.
Accordingly, it is Ordered that the <taosshoesforwomen.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 17, 2022
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