1661, Inc., dba GOAT v. GBG International Holding Company Limited
Claim Number: FA1907001853886
Complainant is 1661, Inc., dba GOAT (“Complainant”), represented by Michael Adams of Rutan & Tucker LLP, California, USA. Respondent is GBG International Holding Company Limited (“Respondent”), represented by Ann Mace of Crowell & Moring LLP, UK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goatscompany.com>, registered with Nom-iq Ltd. dba COM LAUDE.
The undersigned certifies that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.
Scott R. Austin as Panelist and Chair
Paul M. DeCicco as Panelist
The Honorable Karl V. Fink, (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2019; the Forum received payment on July 25, 2019.
On July 26, 2019, Nom-iq Ltd. dba COM LAUDE confirmed by e-mail to the Forum that the <goatscompany.com> domain name is registered with Nom-iq Ltd. dba COM LAUDE and that Respondent is the current registrant of the name. Nom-iq Ltd. dba COM LAUDE has verified that Respondent is bound by the Nom-iq Ltd. dba COM LAUDE 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 July 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2019 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@goatscompany.com. Also, on July 29, 2019, 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.
A timely Response was received and determined to be complete on August 23, 2019.
On September 12, 2019, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Scott R. Austin as the Chair of the three-member Panel along with Paul M. DeCicco and Honorable Karl V. Fink, (Ret.), as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant, 1661, Inc., d/b/a GOAT, and formerly operating under the corporate name of GrubWithUs, Inc., operates a well-known website <https://www.goat.com/>, where it promotes its online marketplace for the sale of a variety of brands of athletic and sporting footwear under the word mark GOAT.
2. Complainant’s website and downloadable application for mobile devices (the “GOAT App”) offers the opportunity to buy and sell every sneaker brand name on the market, both new and used, on a consignment basis.
3. Because its business model sells a variety of brands from independent sellers, each pair of shoes that is dropped off or shipped to Complainant by an independent seller is carefully inspected and authenticated by Complainant to ensure that the goods are genuine before they can be resold.
4. Complainant guarantees the authenticity of athletic footwear, with its reputation depending on the genuineness of the various branded sneakers that are sold through its platform and stores.
5. Complainant provides evidence of consumer recognition of its business identified by its mark through exhibits showing Apple Store and Google Play pages featuring the GOAT App, showing 225,800 ratings averaging over 4.8/5 and 19,998 ratings averaging over 4.6/5, respectively, for a total of more than 245,000 ratings.
6. Complainant has an imposing presence on social media, providing evidence in specific Annexes to its Complaint of over 87,000 people liking and following Complainant’s company page on Facebook, over 86,000 followers on Twitter and over 2.8 million followers on Instagram.
7. Complainant has established trademark rights in the GOAT trademark with respect to its online marketplace services for athletic and sporting footwear in International Class 42, among other goods and services, because it owns a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GOAT mark, including Reg. No. 5,020,478, filed July 24, 2015, registered August 16, 2016, and claiming the GOAT mark was first used in interstate commerce at least as early as April 1, 2015; and Reg. No. 4,908,318, filed July 24, 2015, registered March 1, 2016, and claiming first use in interstate commerce at least as early as April 1, 2015.
8. Respondent’s disputed domain name <goatscompany.com> is confusingly similar to Complainant’s mark as Respondent merely adds one letter “s” and the non-distinctive, descriptive term “company” along with the “.com”generic top-level domain (“gTLD”) to Complainant’s mark which does not distinguish the domain name from Complainant’s GOAT trademark.
9. Respondent has no rights or legitimate interests in the disputed domain name.
10. Respondent is not permitted or licensed to use Complainant’s GOAT mark
11. Respondent is not commonly known by the disputed domain name.
12. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
13. Respondent uses the <goatscompany.com> domain name to mimic Complainant in order to offer athletic footwear products related to Complainant’s business.
14. Respondent has registered and is using its domain name in bad faith in a flagrant attempt to trade off of Complainant’s well-known brand, attracting users looking for Complainant to Respondent’s confusingly similar e-commerce site selling athletic footwear.
15. Respondent’s website is strikingly similar in appearance to Complainant’s based on its logo use, header layout and the main page display format for the athletic footwear it sells on its website.
16. Internet users planning to purchase authentic sneakers through Complainant’s well-known website are likely to find Respondent’s website as a result of the Respondent’s use of the disputed domain name.to purchase athletic footwear from Respondent’s website under the belief that they are genuine products authenticated and sold by Complainant.
17. Respondent’s use of the disputed domain name in furtherance of promoting its competing footwear sales website is likely to create confusion as to the source or endorsement of its goods and as to Complainant’s ownership or sponsorship of the website offering those goods.
18. Respondent is attempting to profit from user confusion caused by its use of the GOAT mark for a similar website through which Respondent receives revenue from the sale of competing similar goods at that website.
19. Respondent attempts to disrupt Complainant’s business and attract Internet users, for commercial gain, by implying an affiliation between Respondent and Complainant.
20. Respondent registered the <goatscompany.com> domain name with actual or at least constructive knowledge that Complainant held strong rights in its GOAT Mark, which was registered with the USPTO as of March 1, 2016 and heavily promoted and publicized at the time Respondent registered the disputed domain name on November 8, 2018.
B. Respondent makes the following contentions:
1. Respondent’s <goatscompany.com> domain name is not confusingly similar to Complainant’s mark because Respondent uses the plural, “goats” and adds the term “company,” distinguishing its domain name from Complainant’s trademark.
2. There are several website domain names not related to Complainant that are composed with the GOAT mark.
3. Respondent has rights or legitimate interests in the <goatscompany.com> domain name as Respondent sought both trademark and patent protection for the associated intellectual property.
4. Respondent filed its trademark application for the GOATS mark in February 2018, more than a year before Complainant initiated this action.
5. Respondent uses the domain name to offer its own products, unrelated to those offered by Complainant, through a website using its own color scheme, logo design and layout.
6. Respondent’s goods are distinct from and in no way compete with Complainant.
7. Respondent does not resell other brands’ shoes; its business is focused on making and selling its unique sneaker/slide combo shoe.
8. Respondent’s <goatscompany.com> domain name was not registered in bad faith because Respondent creates its own goods and services which are unrelated to Complainant’s.
9. The disputed domain name makes no references to nor has similarities with Complainant.
10. Complainant’s assertions of constructive notice are insufficient to establish bad faith.
After reviewing both Complainant's and Respondent's submissions, this Panel finds the following:
(1) the domain name registered by Respondent is confusingly similar to a mark in which Complainant has established trademark rights;
(2) Respondent has no rights or legitimate interests with respect to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of 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 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.
The at-issue domain name is confusingly similar to a mark in which the Complainant has trademark rights
Complainant claims rights to the GOAT mark based upon registration with the USPTO. The Panel finds that ownership of this registration is sufficient to establish Complainant’s rights in the GOAT mark dating back at least to the filing date, and likely to the claimed first use date of January 29, 2015. The Panel also notes that Respondent does not contest Complainant’s claim of first use as of January 29, 2015. See AOL LLC v. Interrante, FA 681239 (Forum May 23, 2006) (where complainant submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”); Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to at least the application’s filing date). Complainant provided in its Complaint Annex copies of its USPTO registrations for the GOAT mark, including Reg. No. 4,908,318, registered Mar. 1, 2016, filed July 24, 2015 and claiming a first use date of January 29, 2015. The Panel finds, therefore, that Complainant has established trademark rights in the GOAT mark for the purposes of Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <goatscompany.com> domain name is confusingly similar to Complainant’s GOAT mark because Respondent’s domain name includes Complainant’s registered GOAT mark in its entirety, adds only the letter “s” to pluralize it, the common business descriptor “company”, and the gTLD “.com.” Other panels have found that where a disputed domain name incorporates a complainant’s mark in its entirety, adding a single letter, a generic and/or descriptive term, and a gTLD to the complainant’s mark does not negate confusing similarity between the disputed domain name and mark under Policy ¶ 4(a)(i). See Philip Morris USA Inc v. Contact Privacy Inc. Customer 1242276235 / NICHAPHA PRADABRATTANAB, D2018-1138 (WIPO July 12, 2018) (panel finds that dictionary word "company", commonly defined as "a commercial business", does not alleviate confusing similarity between the Complainant's trade mark and disputed domain name <marlboro-company.business>); BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, D2008-1338 (WIPO, Nov. 24, 2008) (finding that “addition of the generic words “limited” and “innovation” to the Complainants' mark BHP does not change the overall impression of the designations as being domain names connected to the Complainants”); Arkema France v. Antonietta LoRusso NA, VirtualOffice, D2018-0982 (WIPO July 13, 2018) (Confusing similarity found where domain name incorporated complainant’s entire mark and added one letter and “the term ‘inc’ which is commonly known as the abbreviation for ‘incorporated’"); Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional “s”); Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent contends that Complainant’s mark is not confusingly similar to the at-issue domain name because Complainant’s trademark and Respondent’s domain name are not identical and exist in a crowded field of both marks and domain names using the term “GOAT”. In support of its argument, Respondent specifically lists 5 other US trademark registrations that include the formative “Goat” in class 25 with additional wording.
The Panel’s own brief review of relevant USPTO records also finds, however that Respondent has omitted the registration for the word mark GOAT in International Class 25, identical to Complainant’s word mark in Class 42, which Class 25 word mark was cited by the USPTO in separate 2(d) refusals of registration against Respondent’s applications for GOATS as a word mark (Ser. No. 87/804,325) and GOATS using its letters in a stylized font (Ser. No. 87/804,339) which refusal ultimately resulted in Respondent’s abandonment of both applications. Given this history of USPTO refusals it appears Respondent when it registered its domain name in November 2018 should have been well aware of the dangers of conflict with a word mark identical to Complainant’s, especially in a domain name context where design elements and class distinctions may be unavailing.
While a third application by Respondent for a design mark (Ser. No. 87/804,356) surrounding the word mark GOATS with a substantial wave-like/shadow design has reached publication for opposition, the Panel notes that such design elements have been considered irrelevant for purposes of determining confusing similarity under the policy. Such design elements of a mark can be neither typed nor searched for domain name purposes, only the word element of the mark can. See Park Place Entertainment Corporation v. Mike Gorman, D2000-0699 (WIPO Sept. 5, 2000) (Dominant word element of design mark controls in finding confusing similarity in favor of Complainant: “Because domain names cannot include design elements, Internet users must seek a website by typing in the name they know, rather than a design element” and "Where the dominant portion of both marks is the same, then confusion may be likely, notwithstanding peripheral differences." quoting 3 McCarthy on Trademarks and Unfair Competition, 23:44 and cases cited at fn. 3 (2000)); SWATCH AG v. Stefano Manfroi, D2003-0802 (WIPO Jan. 20, 2004) (confusing similarity found between SWATCH design mark and <swatchnews.com> since a domain name in no way can include a design element, any Internet user must find a website by searching the name they know, rather than the design element) Based on the foregoing cases the design element in Respondent’s trademark application cannot be used to distinguish it from Complainant’s mark in the domain name context. Neither can the addition of an “s” or a common business descriptor such as “company”.
Even if the Panel were prepared to overlook the existence of the registrations the Complainant has proved, the Respondent's argument focusing on design distinctions or third-party registrations misunderstands the nature of the inquiry at this stage. On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks. See, e.g. Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different from the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Taking all of the foregoing into consideration the Panel agrees with Complainant and finds that the <goatscompany.com> domain name incorporating in full Complainant's registered GOAT mark does not contain additions that would sufficiently distinguish it from Complainant’s mark and therefore, the at-issue domain name is confusingly similar to a mark in which Complainant has established trademark rights and Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Respondent lacks rights and legitimate interests in respect of the at-issue domain names
Under the Policy Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name to meet the requirements of Policy ¶ 4(a)(ii), and 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 argues that Respondent has no rights or legitimate interests in the <goatscompany.com> domain name, stating, without challenge by Respondent, that Respondent is not licensed or authorized to use Complainant’s GOAT mark and that Complainant is not commonly known by the disputed domain name based on WHOIS evidence attached in an Annex to its Complaint.
WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (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 of record submitted by Complainant identifies the Respondent as the registrant organization, “GBG International Holding Company Limited”. See Compl. Annex A. Respondent provides in Annex 8 to its Response a declaration by the Associate General Counsel to its parent holding company, Global Brands Group Holding Limited. The declarant states that Respondent is the subsidiary that is merely the “Holder” of the disputed domain name, while another subsidiary under a different name operates the business, manages the domain name, and is authorized to use the GOATS trademark by a third subsidiary under a different name which holds all trademarks of the business, including the words plus design mark in the pending application for US Trademark Registration (Ser. No. 87/804,356). See Resp. Annex. 8. None of these entities bears a name that remotely resembles the disputed domain name and nothing in the declaration states that any of the subsidiaries are commonly known by the disputed domain name. There is also no evidence submitted by Respondent in the declaration or otherwise to suggest Respondent was authorized to use the GOAT mark or incorporate it into the disputed domain name. Based on its review of the WHOIS evidence, the Panel finds Respondent is neither authorized to use nor commonly known by the disputed domain name per Policy ¶ 4(c)(ii) and Complainant has met its prima facie burden under this element of the Policy.
In addition, Complainant argues that Respondent uses the <goatscompany.com> domain name to redirect users to Respondent’s competing website where, like Complainant, Respondent sells athletic footwear to retail consumers. Use of a disputed domain name to offer competing products and services may not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) & (iii). See 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 Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of domain names, which were confusingly similar to Complainant’s mark, to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website). Complainant contends that Respondent displays Complainant’s mark as part of a logo on its website and offers to sell its footwear products in direct competition with Complainant and attached in its Complaint Annex web pages from each party’s website for comparison. A review for comparison of Complainant’s website and Respondent’s shows that as of July 24, 2019 both currently sell athletic footwear products to consumers with photos of profiles of various models for sale. Respondent contends that it was in “demonstrable preparations” of its business at <goatscompany.com> shortly before this proceeding was initiated and provides tweets and emails in the Response Annex announcing the forthcoming opening of its online business in July 2019 under the disputed domain name. Respondent also argues that these considerable preparations to sell its own shoes on its own website defeat Complainant’s efforts to prove that Respondent lacks a legitimate interest in the disputed domain. Upon review of the Annex evidence and the respective websites the panel is not persuaded by Respondent’s arguments. Whether still in preparation or fully operational, encapsulating Complainant’s registered mark in a confusingly similar domain name for a website to sell goods similar to those of the mark owner is not “a bona fide offering of goods or services”. The Panel agrees with Complainant and finds that Respondent’s use of the <goatscompany.com> domain name is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii). The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Complainant argues that Respondent attempts to disrupt Complainant’s business and attract Internet users, for commercial gain, by implying an affiliation between Respondent and Complainant. Using a disputed domain name to give an impression of affiliation or association with a complainant and sell competing goods or services may be evidence of 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 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.”) Here, Complainant contends that Respondent creates the implication of affiliation with Complainant and uses the disputed domain name to sell competing goods. Complainant in Annexes attached to its Complaint provides a screenshot of the disputed domain name’s resolving webpage which features athletic footwear or sneakers for sale at retail to consumers, which are the same goods offered for sale at retail to consumers by Complainant at its website. While it is true that quality, source or even price may vary, the products offered at each website, athletic footwear, are essentially the same. See Compl. Annexes G and L. The Panel finds, therefore, that Respondent registered and uses the <goatscompany.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
The Panel notes that there is no conceivable future use of the subject domain name that would be non-infringing given the fact that the domain name incorporates Complainant’s GOAT mark in its entirety. Such conduct has been found, by itself, to constitute bad faith use of the domain names. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000); Neal & Massy Holdings Limited v. Massy Nealand, FA1305001498038 (NAF May 24, 2013); Clark Equipment Company v. David Sharpley / Sharpley, David, FA1308001513849 (NAF September 24, 2013) (involving the registration of bobcatequipment.com and other bobcat domain names; finding even passive holding to be bad faith use as “any future use of such domain names would remain confusingly similar to the BOBCAT mark”). Such misuse of a domain name is clear evidence of bad faith registration and use pursuant to Policy Paragraph 4(b)(iii).
Lastly, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s GOAT mark. Although this Panel agrees with prior panels that have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a disputed domain name that incorporates a well-known mark in its entirety to direct Internet traffic may be evidence of actual knowledge in a mark. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
Respondent argues against the application of constructive notice but does not deny actual knowledge. Instead Respondent again argues the different classes of the parties’ respective applications for trademark registration, asserts Respondent and Complainant are not competitors and that it was implementing a distinct business plan at the time this proceeding was initiated.
The Panel recognizes that the term “Goat” is or can be considered a descriptive common term, apparently even in the sports world as an abbreviation. The fundamental problem for the Respondent in the present case is that it is not descriptive of an online marketplace for the sale of athletic footwear products. It has significance in relation to a “marketplace for athletic footwear" only through its association with the Complainant as the Complainant's trademark. In those circumstances, the Panel has difficulty in accepting that Respondent was unaware of the Complainant's trademarks when registering the disputed domain name in November 2018, at least 2 years after Complainant’s mark was registered and over 3 years after its stated first use, if that is in fact what they are claiming. Complainant argues that due to its highly publicized rights in the GOAT mark, its imposing presence on social media, providing evidence in specific Annexes to its Complaint of over 87,000 people liking and following Complainant’s company page on Facebook, over 86,000 followers on Twitter and over 2.8 million followers on Instagram and Respondent’s registration of a disputed domain name containing the mark to sell competing goods, it is evident that Respondent had knowledge of Complainant’s rights in the mark prior to registering its confusingly similar <goatscompany.com> domain name. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s GOAT mark thus constituting bad faith per Policy ¶ 4(a)(iii). Considering all of the circumstances, therefore, the Panel finds that Complainant has satisfied the requirements 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 <goatscompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist and Chair
Paul M. DeCicco, Panelist
The Honorable Karl V. Fink, (Ret.), Panelist
Dated: September 26, 2019
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