DECISION

 

DBI Brands Management LLC v. Client Care / Web Commerce Communications Limited

Claim Number: FA2308002059984

PARTIES

Complainant is DBI Brands Management LLC ("Complainant"), USA, represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Client Care / Web Commerce Communications Limited ("Respondent"), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <keds-espana.com>, registered with 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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 31, 2023; Forum received payment on August 31, 2023.

 

On September 1, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <keds-espana.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. 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 September 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 2023 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@keds-espana.com. Also on September 5, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On September 26, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.

 

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 any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant's KEDS brand was launched in 1916, the original sneaker, and since that time it has been a leader in casual and athletic footwear throughout the world. Complainant has rights in the KEDS mark through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 114,848, registered January 2, 1917). The disputed domain name is confusingly similar to Complainant's KEDS mark as it incorporates the mark in its entirety while adding a geographic term and 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 KEDS mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant, while mimicking Complainant's own website.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant's business by way of mimicking Complainant's own website thereby attracting users for commercial gain.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on December 22, 2021.

 

2. Complainant has established rights in the KEDS mark through its registration of the mark with the USPTO (e.g., Reg. No. 114,848, registered January 2, 1917).

 

3. The disputed domain name's resolving website mimics Complainant's website while displaying Complainant's mark, products, and images.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 asserts rights in the KEDS mark through its registration of the mark with the USPTO (e.g., Reg. No. 114,848, registered January 2, 1917). Registration of a mark with the USPTO is generally sufficient in establishing rights in the mark. Since Complainant has provided evidence of trademark registration with the USPTO, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues the disputed domain name <keds-espana.com> is confusingly similar to Complainant's KEDS mark. Under Policy ¶ 4(a)(i), adding a geographic term along with the ".com" gTLD is insufficient in differentiating from the mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i)."); see also 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 mark in its entirety and adds a geographic term "Espana." Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant's KEDS 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 asserts Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its KEDS 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. See M. Shanken Commc'ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) ("The WHOIS information of record lists the registrant as "Robert Chris," and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii)."). The unmasked WHOIS information identifies Respondent as "Client Care / Web Commerce Communications Limited." Thus, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant further contends Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Complainant provides a screenshot of the disputed domain name's resolving webpage, which mimics Complainant's website while displaying Complainant's mark, products, and images. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant is not a bona fide offering of goods or services, nor any noncommercial or fair use. See hipChain, 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 Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002) ("Respondent's use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant's [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)."). The Panel therefore finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any 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 Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant's business and attracting users for commercial gain. The Panel finds that passing off as a complainant while offering to sell suspected counterfeit versions of the complainant's products can evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and (b)(iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) ("Respondent's primary offering seem to be counterfeits of Complainant's toy car products. Respondent's use of the <magictrackscars.com> domain name is thus disruptive to Complainant's business per Policy ¶ 4(b)(iii)"); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). The Panel recalls Complainant provides a screenshot of the disputed domain name's website, which prominently displays the KEDS trademark along with photographs of suspected counterfeit KEDS-branded products. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).

 

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 <keds-espana.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: September 28, 2023