DECISION

 

Edelman Shoe, Inc. v. zhang qiang

Claim Number: FA2412002129169

PARTIES

Complainant is Edelman Shoe, Inc. ("Complainant"), represented by Dylan Davidson of VantageBP, LLC, California, USA. Respondent is zhang qiang ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <samedelmangreece.net>, registered with Paknic (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 December 12, 2024; Forum received payment on December 12, 2024.

 

On December 14, 2024, Paknic (Private) Limited confirmed by e-mail to Forum that the <samedelmangreece.net> domain name is registered with Paknic (Private) Limited and that Respondent is the current registrant of the name. Paknic (Private) Limited has verified that Respondent is bound by the Paknic (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 December 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2025 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@samedelmangreece.net. Also on December 16, 2024, 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 January 7, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.

 

On January 7, 2025, the Panel issued a Procedural Order requesting Complainant to provide evidence supporting its claim that Respondent is misrepresenting itself as the official website of Complainant to sell unauthorized versions of its products. In response, on January 11, 2025, Complainant submitted an Additional Submission addressing the Panel's request.

 

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 is one of the largest publicly traded footwear companies in the United States. Complainant has rights in the SAM EDELMAN mark with the USPTO (Reg. No. 5,874,464, registered October 1, 2019). The disputed domain name is confusingly similar to Complainant's SAM EDELMAN mark as it incorporates the mark in its entirety while adding a geographic term and the ".net"  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 SAM EDELMAN 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 passed itself off as Complainant while offering competing products.

 

(iii) Respondent registered and used the disputed domain name in bad faith. Respondent disrupts Complainant's business and sells competing goods while attracting users for commercial gain by passing itself off as Complainant.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

C. Additional Submissions

In response to the Panel's Procedural Order, Complainant submitted evidence demonstrating that the website associated with the disputed domain name is unlawfully selling counterfeit replicas of Sam Edelman products without authorization. The site improperly uses Sam Edelman's trademarks, copyrights, and brand name to advertise and sell unlicensed merchandise, leading to customer confusion, reputational harm, and brand dilution. Customers have frequently reported purchasing substandard counterfeit products from the site. These actions constitute an infringement of Sam Edelman's intellectual property rights and an unauthorized exploitation of the brand's reputation. Complainant has also provided screenshots of various unauthorized products listed on the disputed domain's website, along with links to its original products for comparison.

 

FINDINGS

1. The disputed domain name was registered on June 20, 2023.

 

2. Complainant has established rights in the SAM EDELMAN through its registration with the USPTO (Reg. No. 5,874,464, registered October 1, 2019).

 

3. The disputed domain name resolves to a website that, by reproducing the SAM EDELMAN mark and copyrighted material sourced from Complainant's official website and Instagram page, misrepresents itself as an official website of Complainant. The website offers unauthorized versions of Complainant's goods for sale, directly competing with Complainant's merchandise.

 

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 SAM EDELMAN through its registration with the USPTO (Reg. No. 5,874,464, registered October 1, 2019). 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 <samedelmangreece.net> is confusingly similar to Complainant's SAM EDELMAN mark. Under Policy ¶ 4(a)(i), adding a geographic term along with a gTLD is insufficient in differentiating from the 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)."). The disputed domain name incorporates Complainant's mark in its entirety and adds the geographic term "Greece" and the ".net" gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant's SAM EDELMAN 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 Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the WHOIS data lists "zhang qiang" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that 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. 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)."). 

 

Complainant has submitted screenshots of the disputed domain name's resolving webpage alongside images of Complainant's original products for comparison. The Panel observes that Respondent reproduces the SAM EDELMAN mark and copyrighted material from Complainant's official website, falsely representing itself as an official website of Complainant to offer unauthorized versions of Complainant's goods for sale, thereby directly competing with Complainant's merchandise. Consequently, the Panel determines that Respondent is not using the disputed domain name for any bona fide offering of goods or services or for any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

The Panel finds that Complainant has established a prima facie case based on the above considerations. As Respondent has neither filed a Response nor otherwise attempted to rebut the prima facie case, the Panel concludes 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 while offering competing products. Under Policy ¶¶ 4(b)(iii) and (iv), offering unauthorized or competing items in disruption of a complainant's business while attracting users for commercial gain is evidence of bad faith registration and use. See Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA 1587466 (Forum Dec. 13, 2014) ("The Panel finds that Respondent's use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant's business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii)."); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant's connection with the website by selling counterfeit products). 

 

As previously noted, the website associated with the disputed domain name prominently displays the reproduction of the SAM EDELMAN mark and copyrighted material from Complainant's official website and passes itself off as an official website of the Complainant for the purpose of offering for sale unauthorized versions of Complainant's goods, in direct competition with Complainant's merchandise. This creates a strong impression of affiliation with Complainant by copying the SAM EDELMAN mark and placing it at the top left side of the website, mimicking Complainant's website. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith under 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 <samedelmangreece.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: January 13, 2025