Allen-Edmonds Shoe Corporation v. joseph c/o
joseph scorsone
Claim Number: FA0601000624511
PARTIES
Complainant is Allen-Edmonds Shoe Corporation (“Complainant”), represented by Joseph J. Jochman, of Andrus, Scales, Starke & Sawall, LLP, Suite 100, 100 East Wisonsin Avenue, Milwaukee, WI 53202. Respondent is joseph c/o joseph scorsone (“Respondent”), represented by Alan A. Turner, of Turner & McDonald, P.C., 1725 Spruce Street, Philadelphia, PA 19103.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allenedmondshoes.com>,
registered with Domainbank.
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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 10, 2006; the National Arbitration Forum received a
hard copy of the Complaint on January 12, 2006.
On January 11, 2006, Domainbank confirmed by e-mail to the National
Arbitration Forum that the <allenedmondshoes.com>
domain name is registered with Domainbank and that the Respondent is the
current registrant of the name. Domainbank
has verified that Respondent is bound by the Domainbank registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On January 17, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 6, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@allenedmondshoes.com by e-mail.
A timely Response was received and determined to be complete on February
6, 2006.
An also timely Additional Submission was received from Complainant on
February 13, 2006, in compliance with Supplemental Rule 7(a). On February 15,
2006 Respondent timely replied to Complainant’s Additional Submission pursuant
to Supplemental Rule 7(c).
On February 14, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Roberto A. Bianchi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In its Complaint, Complainant contends the following:
-
The domain name
is confusingly similar to a trademark in which the Complainant has rights.
Respondent’s domain name, <allenedmondshoes.com>, is confusingly
similar to the Complainant’s <allenedmondsshoes.com> domain name.
Comparing the Complainant’s domain name with Respondent’s domain name, the
marks are phonetically the same.
-
The Respondent
has no rights or legitimate interests with respect to the domain name. The
Respondent is not and has not been commonly known by the domain name.
Respondent’s website under the disputed domain name does not itself sell shoes,
but links to other distributors of shoes who are the Complainant’s competitors.
The Respondent’s domain name is being used to misleadingly divert potential
customers of the Complainant to Respondent’s store and products for a
commercial gain.
-
The domain name
was registered in and is being used in bad faith. Respondent’s domain name is
an example of classical “typo-squatting”, a deliberate slight misspelling of
Complainant’s mark in the hopes of diverting Internet users to Respondent’s
website by anticipating inadvertent typographical errors. Respondent’s domain
name links to a page of sponsored links, all directed to discount or wholesale
shoe distributors, competitors of Complainant.
-
Respondent must
have known of the existence of Complainant’s mark when it registered the
subject domain name in 2004. The fact that Respondent is presently subject to a
federal criminal action in a case where Complainant was the victim of mail
fraud is additional evidence that the domain name has been registered and is
being used in bad faith.
B. Respondent
In its Response, Respondent makes the following contentions:
-
It is admitted
that there is a similarity between the domain name of Complainant
<allenedmondsshoes.com> and the disputed domain name.
-
It is denied
that Respondent’s domain name links to Respondent’s website. In fact, the domain
name is a “parked domain”, and the parked domain listing is the result of
actions taken by Domain Bank, the registrar of the domain name, in accordance
with its own registration policy. The
resulting “under-construction” page changes from time to time.
-
Respondent has
a legitimate business reason and legal interest for registering the subject
domain name: it currently sells Allen Edmonds brand shoes from his retail shoe
store, “Joseph’s Shoes”. Respondent’s domain name gives Complainant’s products
more exposure.
-
Although
Respondent’s principal Mr. Joseph Scorsone is presently subject to criminal
charges in Wisconsin, those charges remain open at the time the Response was
filed. Accordingly, Respondent moves to strike every reference to what is no
more than inadmissible and scandalous newspaper story.
C. Additional Submissions
C. 1. In its Additional Submission, Complainant makes the following
contentions:
Complainant admits that it sold shoes directly to Respondent through
2003. However Complainant ended this relationship in July of 2004 and no longer
supplies Respondent with shoes. If Respondent is currently selling shoes
obtained after July 15, 2004 then these shoes were obtained in a manner
unauthorized by and in contravention of the policy of the Complainant. The
termination of dealings with the Respondent by the Complainant deprived
Respondent of any legitimate justification for using the trademark.
C.2. In its Reply to Complainant’s Additional Submission Respondent
contends as follows:
-
Relevant,
criminal conduct may be proved only by independent evidence, or by a criminal
conviction, and Complainant has offered no such evidence, since there is no
criminal conviction.
-
Contrary to
Complainant’s contention that Respondent’s inventory of Allen Edmonds shoes was
obtained without authorization of Complainant, this inventory was purchased
directly from Complainant. Therefore Respondent is legally entitled to sell the
purchased goods. Respondent registered the disputed domain name for that
purpose, although he has not yet developed the intended website. This shows
Respondent’s legitimate interest in the domain name
FINDINGS
Complainant Allen-Edmonds Shoe Corporation is a manufacturer and
distributor of shoes since 1936. By submitting the U.S.P.T.O.’s Principal Register certificate – Reg. Number
822,911 of January 24, 1967, with Certificate of renewal of January 24, 1987,
Complainant has shown that it has rights in the ALLEN EDMONDS trademark,
covering men’s shoes in Class 39 (first use 1936; in commerce 1936).
Complainant registered the
<allenedmonds.com> domain name in 1995 and the
<allenedmondsshoes.com> domain name in October 2000. Both domain names
are used as websites, and are fully operative.
Respondent Joseph Scorsone is doing business
as “Joseph’s Shoes”, a shoe retailer in Philadelphia. He is or has been a
reseller of ALLEN EDMONDS shoes.
Mr. Scorsone is presently subject to criminal
charges in Wisconsin, following a criminal complaint for mail fraud against
Allen-Edmonds Corporation. As of the time of the filing of the response, no
adjudication had been entered in such case.
On August 20, 2004 Mr. Joseph Scorsone registered the domain name in dispute on behalf of “joseph”.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
As the complaint was filed on January 10, 2006, the National
Arbitration Forum’s UDRP new Supplemental Rules, effective January 1, 2006, are applicable to the present case. See http://www.arbforum.com/domains/udrp/rules.asp.
Complainant’s rights in the ALLEN EDMONDS
trademark pre-date the registration of the disputed domain name. The addition of the letters “h”, “o”, “e”,
and “s” to Complainant’s mark, the lack of a space between the words “ALLEN”
and “EDMONDS”, and the presence of the gTLD “.com” are not sufficient to
distinguish the domain name from Complainant’s mark. The last letter of
Complainant’s ALLEN EDMONDS mark, together with “HOES”, result in the word
“shoes”. A descriptive term such as “shoes” – the goods specifically protected
by the mark – is not sufficient to distinguish the domain name from the mark.
Furthermore, Respondent’s domain name is practically identical to Complainant’s
<allenedmondsshoes.com> domain name.
The Panel concludes that the domain name is
confusingly similar to Complainant’s mark.
In Oki
Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the learned
panelist Mr. Bernstein listed the requirements to be complied with, at a
minimum, by a reseller to establish a bona
fide offering of goods and services, and thus have a legitimate interest in the domain name
based on ¶ 4(c)(i) of the Policy:
-
Respondent must
actually be offering the goods or services at issue.
-
Respondent must use
the site to sell only the trademarked goods; otherwise, it could be using the
trademark to bait Internet users and then switch them to other goods.
-
The site must
accurately disclose the registrant’s relationship with the trademark owner; it
may not, for example, falsely suggest that it is the trademark owner, or that
the website is the official site, if, in fact, it is only one of many sales
agents.
-
The Respondent must
not try to corner the market in all domain names, thus depriving the trademark
owner of reflecting its own mark in a domain name.
It is clear
that Respondent did not corner the market in all domain names related to
Complainant’s mark. Nor did Respondent deprive the Complainant of reflecting
its own mark in a domain name, since Complainant owns and operates the <www.allenedmonds.com> and <www.allenedmondsshoes.com>
web sites.
Respondent has
used the
domain name by “parking” it with Domainbank. According to
this registrar, “[r]egistries require the use of name servers or hosts for
every domain registered. In other words, every domain name has to be linked to
a name server for it to be valid. Some people do not have their own name
servers, therefore Domain Bank offers 'domain parking' (name parking) on its
servers. It is a convenient way to hold or 'park' domain name for an extended
amount of time.” See
http://www.domainbank.net/glossary.php#parking.
As it will be seen under the next heading, the current content of the web page under the domain name in question are links to several shoe retailers, who offer different brands of shoes from competitors of Complainant. Thus, although Respondent is a re-seller of Complainant’s trademarked products, he is not using the disputed domain name to offer only the ALLEN EDMONDS shoes, or to offer such brand of shoes at all. As in Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, the Respondent is not confining his use of the domain name to the resale of Complainant’s products by reference to Complainant’s mark. Also, the links posted on Respondent’s web site are not “irrelevant” in the sense of Weber-Stephen Products Co. v. Armitage Hardwar, Case No. D2000-0187 (majority vote), May 11, 2000. In fact the only content of the <allenedmondshoes.com> web page are links to third-party shoe vendors.
Such diversionary use of the domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
It may be, as
alleged by Respondent, that it is Domainbank’s own policy to decide which links
are being posted on the web page of a “parked” domain. According to Domainbank’s
Registration Agreement, paragraph 6.1,
“[b]y not designating name servers during the
registration process, you hereby consent to and authorize Domain Bank's
placement of a "coming soon" page, and its associated contents, on
your parked domain. You may change the name server configuration (or
"un-park" the domain) after the registration is complete. If you need
to register name servers using the domains that you are currently registering,
the names will initially be parked with Domain Bank until you modify the name
servers after the domain registration is complete, using your account
manager.” See Registration
Agreement of Domain Bank, Inc., available at
https://secure.registerapi.com/order/register/agreement.php?siteid=38206.
Pursuant to paragraph 6.3 of the Agreement “[t]he
"coming soon" and/or "expired" pages may contain
advertisements and other materials selected by Domain Bank, in Domain Bank's
sole discretion. This may include, but is not limited to third-party Web sites,
third-party product and service offerings, and/or Internet search engines.” Id.
However, Respondent itself chose Domainbank as the registrar, thereby
agreeing to its parking policy. Even if Respondent may not change this policy,
he could have “un-parked” the domain name at any moment. As the “coming soon”
web page under the disputed domain name includes links to the websites of
providers of shoes branded other than ALLEN EDMONDS, the requirement that the
site be used to sell only the trademarked goods is absent. Therefore there is
no basis for claiming rights or legitimate interests under Policy ¶ 4(c)(i).
Complainant contends, and Respondent does not deny, that Respondent is
not and has not been known by the domain name. Thus Policy ¶ 4(c)(ii) is not
applicable. Nor does Policy ¶ 4(c)(iii) (legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue) seem applicable either. In fact the links posted on the web page
under the parked domain name are of a commercial nature. Internet users having
written an obvious variation of Complainant’s mark (suppressing the final “s”
in EDMONDS, and adding the term “shoes” to the result) are misleadingly
re-directed to sites offering third parties’ brands of shoes for sale, that is
they are diverted for the benefit of several competitors of Complainant. Of
course, this use of the web site cannot give Respondent any right or legitimate
interest in the domain name.
Other circumstances also indicate that
Respondent lacks rights or legitimate interests. Complainant does not appear to have legally acquiesced in Respondent’s registration and use of the
domain name, nor does Respondent’s use seem to be a nominative fair use. See Adaptive Molecular
Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a
Machines & More, D2000-0006 (WIPO Feb. 28, 2000). Even
if Complainant’s mark has been completely reproduced in Respondent’s domain
name, no disclaimer was posted that the site is not related to Complainant,
differing from DaimlerChrysler A.G.
v. Donald Drummonds, D2001-0160 (WIPO June 18, 2001) (where “Respondent's site contains a clear disclaimer,
which states that it is displaying trademarks that belong to Complainant and
that Respondent is in no way affiliated with Complainant”).
In sum, Complainant proved that Respondent
lacks rights or legitimate interests in the domain name.
Complainant relies on
the fact that Mr. Scorsone is presently subject of criminal charges for mail
fraud against the Complainant before a US district court in Wisconsin, but
without explaining in which manner or to what extent such charges and criminal
proceeding should be considered as relevant in the instant UDRP proceeding. In
particular, Complainant does not state which specific conduct of Mr. Scorsone
should be considered as evidence of registration and use in bad faith of the <allenedmondshoes.com>
domain name, as required by Rules ¶ 3(b)(ix)(3). Therefore the Panel has not
considered Complainant’s vague allegation about the criminal charges against
Mr. Scorsone.
Complainant contends that Respondent’s web
page contain links to discount or wholesale shoe distributors who are
competitors of Allen-Edmonds. Because the parties do not appear to coincide as
to the current content of Respondent’s website –probably due to changes in such
content– on February 23, 2006 this panelist independently connected his browser
to the URL at http://www.allenedmondshoes.com. The resulting “under
construction” web page basically consists of links to the following web sites:
-
Florsheim, a well known shoe manufacturer and
distributor (http://www.florsheim.com/flstore/topCategory.do?cID=10001),
exhibiting different gentleman shoes, belts and accessories, with their prices.
-
Herring Shoes in the UK (http://www.herringshoes.co.uk/), showing
different models of gentleman shoes of the Herring, Loake, Church’s and Barker
brands.
-
Shoo Magazine, a coffee-table publication (http://www.shoomagazine.com/?referrer=google),
specialized in designer shoes.
-
Propét Walking Shoes (http://www.propetglobal.com/index.htm).
-
FlamencoFashion.Com
(http://www.flamenco-fashion.com/catalog/), a retailer of flamenco-dance shoes
and accessories.
-
China’s Ourtrade.net (http://www.ourtrade.cn/)
the China-International Shoes Trade Net.
-
AshleyBrook.Com (http://www.ashleybrook.com/),
an e-commerce shoe retailer.
-
Howcool.com
http://howcool.com/catalog/index.php, an Internet retailer of shoes, clothing
and novelties.
Under none of these Internet addresses are
ALLEN EDMONDS shoes being offered, but products of Complainant’s competitors.
No reference is made in the web page to Respondent’s s retail shop. There is
also no disclaimer about the relationship between Respondent’s web site and
Complainant. The result of the Panel’s visit to Respondent’s web site does not
support Respondent’s contention that he intends to sell his inventory of ALLEN
EDMOND shoes by using the domain name, although this inventory was purchased
from Complainant about two years ago, a short time before the registration of
the domain name in dispute.
In the Panel’s view, after agreeing to
Domainbank’s “parking” policy and not having un-parked the domain name,
Respondent is using the domain name to intentionally attract, for commercial
gain, Internet users to his web site or other on-line location belonging to
third parties, by creating a likelihood of confusion with Complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of his web site or
location or of a product or service on his web site or location. This
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain); see also eBay, Inc v. Progressive Life Awareness
Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where
the respondent is taking advantage of the recognition that eBay has created for
its mark and therefore profiting by diverting users seeking the eBay website to
the respondent’s site); see also Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site).
There is no
allegation that Respondent has registered and is using the disputed
domain name with
the purpose of generating income through advertising or for otherwise
participating in the revenues of Complainant’s competitors. However, in the opinion of the Panel there is no need
that the purpose of “commercial gain” required by Policy ¶ 4 (b)(iv) be of
Respondent itself. This requirement is also satisfied when business intended for the Complainant is simply
diverted to Complainant’s competitors,
like those mentioned in the links of the <allenedmondshoes.com>
web site. Even assuming that
when Respondent re-directed users to the sites of Complainant’s competitors he
had no purpose of commercial gain, but simply aimed at depriving Complainant of
selling its ALLEN EDMONDS shoes or disturbing Complainant’s operations, that
also would be evidence of bad faith registration and use under the general
provision of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allenedmondshoes.com>
domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: February 28, 2006
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