DECISION

 

ABG-Rockport LLC v. wuyi / wu yi

Claim Number: FA2601002201979

 

PARTIES

Complainant is ABG-Rockport LLC ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is wuyi / wu yi ("Respondent"), 中国.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rockportportugalshoes.com>, registered with Xin Net Technology Corporation.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 27, 2026; Forum received payment on January 27, 2026.

 

On January 27, 2026, Xin Net Technology Corporation confirmed by e-mail to Forum that the <rockportportugalshoes.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 January 28, 2026, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of February 17, 2026 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@rockportportugalshoes.com. Also on January 28, 2026, the Chinese and English 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 in Chinese and English.

 

On February 18, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.

 

PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING

Complainant registered ROCKPORT in the United States for the benefit of Complainant's United States based and originating business. The mark is registered in the United States and contains English characters and the English words "Rockport," "Portugal," and "shoes."  What's more, the <rockportportugalshoes.com> domain name's webpage is in English. 

 

Notwithstanding that the relevant Registration Agreement may have been written in Chinese, pursuant to UDRP Rule 11(a) the Panel finds persuasive evidence to suggest the likely possibility that Respondent is to a material degree conversant and proficient in the English language. Since Respondent most likely has a working knowledge of the English language, Complainant would be unduly burdened if this proceeding were to continue in Chinese as there would be no cognizable benefit to Respondent, the dispute resolution provider, or the Panel, and yet Complainant would have to alone endure the time and expense of facilitating the translation of relevant documents into Chinese.

 

Therefore, after considering the circumstances of the present case including the proper service of a Chinese and an English Written Notice of the Complaint upon Respondent and Respondent's failure to respond thereto, the Panel finds that the instant proceeding should be in English.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends in part as follows:

 

Complainant ABG-Rockport LLC is the owner of the famous Rockport brand. Complainant was established over 50 years ago in 1971 in a small New England coastal town of the same name. Founded by a father and son duo, their goal was to put comfort first without compromising style. Rockport created the world's first lightweight rubber-soled shoe which revolutionized footwear and how consumers move through life.

 

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The domain name consists of the "www." prefix followed by Complainant's trademark "Rockport" (not case sensitive), the geographic identifier "Portugal" (not case sensitive), the descriptive term "shoes", and the generic suffix ".com". Further, where the relevant trademark is recognizable within the domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Therefore, the domain name is identical or confusingly similar to Complainant's registered trademark.

 

Respondent has no rights or legitimate interests in respect of the domain name. Respondent has not been licensed, contracted, or otherwise permitted by the Complainant to use the Complainant's trademark or to apply for any domain names incorporating the ROCKPORT trademark, nor has the Complainant acquiesced to use the ROCKPORT trademark or to apply for any domain names incorporating the ROCKPORT trademark, nor has the Complainant acquiesced in any way to such use or application of the ROCKPORT trademark by the Respondent. Additionally, there is no evidence of fair use. Furthermore, there is no evidence that the Respondent is using or plans to use the ROCKPORT trademark or the domain name incorporating the ROCKPORT trademark for a bona fide offering of goods or services that doesn't infringe Complainant's intellectual property rights. On the contrary, Respondent has been actively using the ROCKPORT trademark in the domain name to promote its website for illegitimate commercial gains by operating a counterfeit website.

 

The domain name was registered and is being used in bad faith. Respondent was aware of Complainant's trademark at the time it registered the domain name. Complainant's trademarks are well-known around the world. Respondent's registration of a domain name containing the Complainant's trademark can indicate bad faith registration. Respondent is trying to pass off the domain name as the Complainant's website to sell competing and unauthorized goods. On the domain name's website, Respondent uses the Complainant's trademarks as well as images of products bearing the ROCKPORT trademarks without any authorization. Respondent has no reason to use the Complainant's trademarks in the domain name or on the associated website other than to attract internet users to its site for commercial gain, especially since Complainant's official website is www.rockport.com. Finally, Respondent used a privacy shield to mask its identity, which makes it difficult for Complainant to contact Respondent and amicably settle a domain dispute. The use of privacy shields or similar services which mask Respondent's identity are an indication of bad faith. For the foregoing reasons, Respondent is using the domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the ROCKPORT mark.

 

Respondent is not affiliated with Complainant and has not been authorized to use Complainant's trademark in any capacity.

 

Complainant had rights in its mark before Respondent registered the at-issue domain name.

 

Respondent's uses the at-issue domain name and its associated website to pass itself off as Complainant.

 

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

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant's USPTO registration for its ROCKPORT trademark is sufficient to demonstrate Complainant's rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.")

 

Respondent's <rockportportugalshoes.com> domain name contains Complainant's ROCKPORT trademark followed by the country name "Portugal" and the suggestive descriptive term "shoes," with all followed by the confusingly similarity analysis irrelevant ".com" top-level. The differences between Respondent's domain name and Complainant's trademark are insufficient to distinguish <rockportportugalshoes.com> from Complainant's ROCKPORT mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent's <rockportportugalshoes.com> domain name is confusingly similar to Complainant's ROCKPORT trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable 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, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).)

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainants 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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent is not authorized to use Complainant's trademark in any capacity and as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).

 

The WHOIS information for the at-issue domain name leads to the identification of the <rockportportugalshoes.com> domain name's registrant as "wuyi wu yi" and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <rockportportugalshoes.com>. The Panel therefore concludes that Respondent is not commonly known by <rockportportugalshoes.com> for the purposes of Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin  ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) ("The publicly available WHOIS information identifies Respondent as 'Ilyas Aslan' and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.")

 

Respondent's <rockportportugalshoes.com> domain name is used to address a website displaying Complainant's ROCKPORT trademark and product images. Respondent thereby acts to deceive internet users into falsely believing that the <rockportportugalshoes.com> domain name and its linked website are each authorized by Complainant or otherwise associated with Complainant. Respondent's use of the at-issue domain name in this manner is neither indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant's mark and various photographs related to the complainant's business).

 

Given the foregoing, Respondent lacks rights and lacks legitimate interests in respect of <rockportportugalshoes.com>.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, Respondent acted in bad faith.

 

As mentioned above, Respondent uses the at-issue domain name to address a website that appears like it is sponsored by Complainant. The website is adorned with Complainant's mark and photographs and deceptively appears as if it is Complainant's official website or is otherwise associated with Complainant. Respondent's use of <rockportportugalshoes.com> in this manner is disruptive to Complainant's business and is intended to attract internet users looking for Complainant to Respondent's website so that Respondent might wrongly capitalize on the confusion it created between its <rockportportugalshoes.com> domain name and Complainant's ROCKPORT trademark. Respondent's use of <rockportportugalshoes.com> thus demonstrates Respondent's bad faith registration and use under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant."); see also, Chevron Intellectual Property LLC v. Domain ID Shield Service / Domain ID Shield Service CO., Limited, FA 1841700 (Forum June 21, 2019) (finding that respondent was using "chevronplacement.com" in bad faith in order to "disrupt the business of Complainant by causing internet users to think an affiliation exists between Respondent's domain names and Complainant");see also, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).")

 

Moreover, Respondent had actual knowledge of Complainant and its rights in the ROCKPORT mark when it registered <rockportportugalshoes.com> as a domain name. Respondent's prior knowledge is apparent given the notoriety of Complainant's trademark; given Respondent's inclusion of the suggestive term "shoes" in the domain name; and given Respondent's use of the domain name to address a website prominently displaying Complainant's trademark and product images. Respondent's actual knowledge of Complainant and its rights in ROCKPORT further demonstrates Respondent's bad faith. See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum September 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).

 

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 <rockportportugalshoes.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: February 18, 2026