DECISION

 

Minnetonka Moccasin Company, Inc. v. zhang qiang

Claim Number: FA2504002149282

 

PARTIES

Complainant is Minnetonka Moccasin Company, Inc. ("Complainant"), represented by Erin J. Ahern of Vorys, Sater, Seymour and Pease LLP, Ohio, USA. Respondent is zhang qiang ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMEs 

The domain names at issue are <minnetonkauk.com> and <minnetonkaaustralia.com> ("Domain Names"), registered with Paknic (Private) Limited.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 7, 2025; Forum received payment on April 7, 2025.

 

On April 8, 2025, Paknic (Private) Limited confirmed by e-mail to Forum that the <minnetonkauk.com> and <minnetonkaaustralia.com> domain names are registered with Paknic (Private) Limited and that Respondent is the current registrant of the names. 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 April 9, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@minnetonkauk.com and postmaster@minnetonkaaustralia.com. Also on April 9, 2025, 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 April 30, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Since 1946, Complainant has offered footwear, in particular moccasins, and related products under the MINNETONKA mark and various device marks incorporating the MINNETONKA mark. Complainant asserts rights in MINNETONKA mark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 3,655,353, registered July 14, 2009). The <minnetonkauk.com> and <minnetonkaaustralia.com> domain names are confusingly similar to the MINNETONKA mark as they wholly incorporate the MINNETONKA mark, adding only the geographic terms "uk" and "australia" as well as the generic top-level domain ("gTLD") ".com".

 

Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known by the <minnetonkauk.com> and <minnetonkaaustralia.com> domain names. Respondent is not using the Domain Names in connection with any bona fide offering of goods and services or for any legitimate or fair use. Rather, Respondent is passing off as Complainant and offering competing and unauthorized products.

 

Respondent registered and uses the <minnetonkauk.com> and <minnetonkaaustralia.com> domain names in bad faith. Respondent attempts to disrupt Complainant's business and attract, for commercial gain, users to the Domain Names where it offers to sell competing and unauthorized versions of Complainant's goods. Given the content of the websites accessible at the Domain Names, Respondent had actual knowledge of Complainant's rights in the MINNETONKA mark prior to registration of the Domain Names.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the MINNETONKA mark.  Each of the Domain Names are confusingly similar to Complainant's MINNETONKA mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Names and that Respondent registered and has used the Domain Names in bad faith.

 

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 has rights in the MINNETONKA mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 3,655,353, registered July 14, 2009). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, "Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)").

 

The Panel finds that each of the <minnetonkauk.com> and <minnetonkaaustralia.com> Domain Names are confusingly similar to the MINNETONKA mark as they fully incorporate the MINNETONKA mark adding only a geographic term and the ".com" gTLD.  The addition of geographic terms and a gTLD to a trade mark is generally insufficient to negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i).  See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent's <gm-uzbekistan.com> domain name confusingly similar to complainant's GM mark as the addition of the geographic term "-uzbekistan" is inconsequential to a Policy ¶ 4(a)(i) analysis); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."). The Panel holds that Complainant has made out a prima facie case.

        

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the MINNETONKA mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "zhang qiang" as registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).

 

The Domain Names resolve to websites ("Respondent's Websites"), each of which pass off as an official website of the Complainant (through the reproduction of Complainant's mark, provision of images and text descriptions of Complainant's products taken from Complainant's website and absence of a disclaimer) for the purpose of selling moccasins and other products under the MINNETONKA mark in direct competition with Complainant's products. The use of a confusingly similar domain name to resolve to a webpage that offers goods or services that compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain's resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use).  See also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that "use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute 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 finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds that, at the time of registration of the Domain Names, August 15, 2023, Respondent had actual knowledge of Complainant's MINNETONKA mark since the Respondent has impersonated the Complainant on its websites and offers goods in direct competition with Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

        

The Panel finds that Respondent registered and uses the Domain Names in bad faith under Policy ¶ 4(b)(iv) to create confusion with Complainant's MINNETONKA mark for commercial gain by using the confusingly similar Domain Names to resolve to websites offering unauthorized versions of Complainant's products or counterfeit goods.  Using a confusingly similar domain name to pass off as a complainant and offer competing and unauthorized products can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant's business); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) ("Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.").

 

 The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <minnetonkauk.com> and <minnetonkaaustralia.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: May 1, 2025