1661, Inc., dba GOAT v. Morris Sued
Claim Number: FA1908001856389
Complainant is 1661, Inc., dba GOAT (“Complainant”), represented by Michael Adams of Rutan & Tucker LLP, California, USA. Respondent is Morris Sued (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goatshoecare.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2019; the Forum received payment on August 8, 2019.
On August 9, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <goatshoecare.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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 firstname.lastname@example.org. Also on August 13, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
A late Response was submitted on September 16,2019.
On September 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Francine Siew Ling Tan as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant has rights in the GOAT trade mark. The mark is registered with the United States Patent and Trademark Office under Registration Nos. 4,908,318 (registered March 1, 2016) in Class 9: 5,020,478 (registered August 16, 2016) in Class 42: 5,020,477 (registered August 16, 2016) in Class 38; and 5,357,448 (registered December 19, 2017) in Class 35. The Class 35 identification of services covers, inter alia, “providing an online marketplace for buyers and sellers of collectible consumer goods namely, athletic and sporting footwear”. This corresponds with Complainant’s business as a sneaker reseller with an online store and downloadable application for mobile devices. Complainant offers its sellers and sneaker enthusiasts the opportunity to buy and sell every sneaker brand name on the market on a consignment basis.
Complainant asserts that it has an imposing presence on social media with over 88,000 people liking and 91,000 people following its Twitter account and over 2.9 million followers on Instagram.
The disputed domain name was registered on December 8, 2018. It resolves to a website selling footwear cleaning products, which Complainant asserts are related and/or confusingly similar to Complainant’s footwear products.
The disputed domain name is confusingly similar to Complainant’s GOAT trade mark in which it has rights. It incorporates the GOAT trade mark in its entity, adding only the descriptive or common terms “shoe” and “care. These words do not prevent confusing similarity with Complainant’s GOAT trade mark.
Respondent has no rights or legitimate interests in the disputed domain name. It has no rights to any trade mark consisting of the term GOAT and has not made any bona fide offering of goods and services as Respondent uses the disputed domain name to offer goods that compete directly with Complainant’s business. Respondent is not an authorized provider of Complainant’s goods or services. Respondent is not licensed or permitted by Complainant to use any of its trade marks.
Respondent’s use of the disputed domain name has been to disrupt Complainant’s business by selling similar goods to Internet users. Respondent’s website features sneakers on its webpage and appears to copy the look and feel of Complainant’s display of sneakers on the latter’s website. This shows that Respondent was aware of Complainant’s rights in the GOAT trade mark. Respondent is not known by “Goat” or any similar names.
Respondent is using Complainant’s GOAT mark to pass itself off as Complainant, lure visitors to its website, and offering similar products for purchase. Respondent is posing as Complainant to confuse online shoppers.
The disputed domain name was registered and is being used in bad faith. Respondent had actual or at least constructive knowledge that Complainant had strong rights in its GOAT mark. The GOAT mark has been highly publicized. Respondent has used the disputed domain name to disrupt Complainant’s business by diverting potential customers to a site selling competing goods and such use is evidence of bad faith.
Respondent failed to submit a timely Response in this proceeding.
(a) The disputed domain name is confusingly similar to the trade mark GOAT, in which Complainant has rights.
(b) Complainant has failed to establish that Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) Complainant has failed to establish that the disputed 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.
In view of Respondent's failure to submit its Response timely and in view of the length of the delay, the Panel will decide this administrative proceeding on the basis of Complainant's 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 does not find that there are “exceptional circumstances” per the Rules which justify the length of delay in the filing of Respondent’s response and therefore makes its decision on the basis of Complainant’s statements and documents submitted.
Complainant has rights in the GOAT trade mark. The difference between the disputed domain name and Complainant’s mark lies in the addition of the descriptive words “shoe” and “care” and the top-level domain “.com”.
The “.com” element is a technical requirement of domain names and is not relevant to the issue of whether the disputed domain name is identical or confusingly similar to Complainant’s GOAT trade mark.
The additional words “shoe” and “care” are of a non-distinctive nature and do not serve to differentiate the disputed domain name from Complainant’s GOAT trade mark for the purposes of Policy ¶ 4(a)(i), especially since “the relevant trade mark is recognizable within the disputed domain name”. (See ¶1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. See, also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016.)
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s GOAT trade mark.
Policy ¶ 4(a)(i) has therefore been established.
Notwithstanding Respondent’s default, Complainant has to prove its case, which the Panel finds it has failed to. The Panel finds that the evidence tendered by Complainant does not support a finding that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s Exhibit K in fact provides prima facie evidence of the use of the disputed domain name in relation to the offering for sale of shoe cleaning kits and wipes bearing the GOAT Greatest Of All Time mark as well as a distinctive device of a goat. The disputed domain name corresponds to Respondent’s goods.
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”).
Whilst the Exhibit K shows images of sneakers, it also shows Respondent’s “use of … the disputed domain name corresponding to the domain name in connection with a bona fide offering of goods”.
Policy ¶ 4(a)(ii) has therefore not been established.
The Panel also finds Complainant has failed to meet its burden of proof of bad faith registration and use. There is a lack of substantiation for Complainant’s assertions to the effect that:
(i) Respondent’s goods are similar;
(ii) Complainant’s GOAT mark has been “highly publicized”;
(iii) Complainant’s GOAT mark is a “commonly known mark at the time of registration” of the disputed domain name so that bad faith on Respondent’s part should be found on the basis of the principle of constructive knowledge; and
(iv) Respondent duplicated the “look and feel” of Complainant’s website;
Policy ¶ 4(a)(iii) has therefore not been established.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <goatshoecare.com> domain name REMAIN WITH Respondent.
Dated: September 27, 2019
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