DECISION

 

Oboz Footwear LLC v. Baochunbin

Claim Number: FA2208002007020

 

PARTIES

Complainant is Oboz Footwear LLC (“Complainant”), represented by Antoinette M. Tease, Montana, USA.  Respondent is Baochunbin (“Respondent”), International.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <oboz-shoes.com>, registered with Xiamen ChinaSource Internet Service Co., Ltd.

 

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.

 

The Honorable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 3, 2022; the Forum received payment on August 3, 2022.

 

On August 4, 2022, Xiamen ChinaSource Internet Service Co., Ltd confirmed by e-mail to the Forum that the <oboz-shoes.com> domain name is registered with Xiamen ChinaSource Internet Service Co., Ltd and that Respondent is the current registrant of the name. Xiamen ChinaSource Internet Service Co., Ltd has verified that Respondent is bound by the Xiamen ChinaSource Internet Service Co., Ltd 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 4, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of August 24, 2022 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@oboz-shoes.com.  Also on August 4, 2022, the Chinese and English language 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.

 

On August 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING

The Panel notes that the Registration Agreement which relates to the disputed domain name is written in the Chinese language, thereby making the language of the proceedings to be Chinese. However, Complainant has submitted that because Respondent is conversant and proficient in the English language, the proceeding should be conducted in English. The Panel has a discretion under UDRP Rule 11(a) to determine the appropriate language of the proceeding, taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends that Respondent’s website available at the disputed domain name uses English characters and words therein, suggesting that Respondent has some proficiency in the English language. For instance, to take one footwear product at random which is promoted on the website, it is described as Oboz Women's Shoes Yellowstone Premium Mid Waterproof-Espresso, and the Privacy Policy and terms and conditions offered are in English. It is essentially an English language website and, as Complainant’s counsel points out, there is no Chinese language on the site.

 

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that the Respondent is conversant and proficient in the English language.

 

After considering all of the circumstances of the present case, the Panel finds that the proceeding should be conducted in English.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

 

Complainant, Oboz Footwear LLC, is a footwear retailer. Complainant has rights in the OBOZ mark through its registration with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,584,471, registered on March 3, 2009). See Compl. Ex. 1. Respondent’s <oboz-shoes.com> domain name is identical or confusingly similar to Complainant’s OBOZ mark as it incorporates the mark in its entirety while adding a hyphen, the word “shoes” and the “.com” generic top-level domain (“gTLD”).

 

Respondent lacks rights and legitimate interests in the <oboz-shoes.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Instead, Respondent passes itself off as Complainant while engaging in a phishing scheme.

 

Respondent registered and uses the <oboz-shoes.com> domain name in bad faith. Respondent creates a likelihood of confusion among consumers while passing itself off as Complainant. Additionally, Respondent phishes for users’ personal information. Finally, Respondent had actual and/or constructive knowledge of Complainant’s rights in the OBOZ mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1. Complainant is a United States company engaged in the retail footwear industry.

 

2. Complainant has established its trademark rights in the OBOZ mark through its registration of the mark with multiple trademark agencies including the “USPTO (e.g., Reg. No. 3,584,471, registered on March 3, 2009).

 

3. Respondent registered the <oboz-shoes.com> domain name on April 30, 2022.

 

4. Respondent has caused the disputed domain name to be used to pass itself off as Complainant while engaging in a phishing scheme.

 

DISCUSSION

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 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the OBOZ mark through its registration of the mark with multiple trademark agencies including the “USPTO (e.g., Reg. No. 3,584,471, registered on March 3, 2009). See Compl. Ex. 1. Registration with multiple trademark agencies including the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Since Complainant registered its mark with multiple trademark agencies including the USPTO, the Panel finds Complainant has established its rights in the mark under Policy ¶ 4(a)(i).

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s  OBOZ   mark. Complainant contends that Respondent’s <oboz-shoes.com> domain name is identical or confusingly similar to Complainant’s OBOZ mark. Under Policy ¶ 4(a)(i), a domain name is generally considered confusingly similar to the mark it incorporates where it adds a hyphen, a term related to complainant’s business, and the “.com” gTLD. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark.  It incorporates the mark entirely.  It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). The disputed domain name incorporates the OBOZ mark in its entirety while adding the word “shoes”, which is related to Complainant’s business, along with a hyphen and the “.com” gTLD. As the Panel agrees, it finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s OBOZ trademark, adding the word “shoes” which does not negate the confusing similarity between the domain name and the trademark, and to use it in its domain  name;

(b)  Respondent registered the disputed domain name on April 30, 2022;

(c) Respondent has caused the disputed domain name to be used to pass itself off as Complainant while engaging in a phishing scheme;

(c)  Respondent has engaged in these activities without the consent or approval of Complainant;

(d)  Complainant argues that Respondent does not have rights or legitimate interests in the <oboz-shoes.com> domain name because Respondent is not licensed or authorized to use Complainant’s OBOZ mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. 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). The WHOIS information for the disputed domain name identifies Respondent as “Baochunbin”, and nothing in the record rebuts Complainant’s submission that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);

(e)  Complainant contends that Respondent is not using the <oboz-shoes.com> domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes itself off as Complainant while phishing for users’ information. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a complainant in furtherance of a phishing scheme does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides screenshots of the disputed domain name’s resolving website, which displays Complainant’s stylized mark which is used on Complainant’s legitimate website, purports to sell footwear related to Complainant’s business, and displays contact information for Complainant. See Compl. Ex. 3. Additionally, the resolving webpage includes a “registration” page which requests billing address information while displaying images of credit card payment methods, which Complainant submits implies that it collects credit card information from users. Id. Furthermore, Complainant contends that Respondent collects credit card information and then either fails to ship product to customers, or ships products which do not originate from Complainant. As the Panel agrees, it finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant argues that Respondent registered and uses the <oboz-shoes.com> domain name in bad faith by creating a likelihood of consumer confusion and passing itself off as Complainant. Under Policy ¶ 4(b)(iv), taking advantage of confusing similarity between a mark and the domain name is evidence of bad faith registration and use. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Additionally, using a disputed domain name to pass off as a complainant is evidence of bad faith. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) whereRespondent 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.”). The Panel notes that Respondent’s domain name displays Complainant’s stylized mark, purports to sell footwear related to Complainant’s business, and displays contact information for Complainant, furthering the likelihood of confusion among consumers. See Compl. Ex. 3. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

 

Secondly, Complainant contends that Respondent registered and uses the <oboz-shoes.com> domain name in bad faith by phishing for users’ personal information. Under Policy ¶ 4(a)(iii), engaging in phishing is evidence of bad faith registration and use. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel notes that the resolving webpage includes a “registration” page which requests billing address information while displaying images of credit card payment methods, which Complainant submits implies that it collects credit card information from users. See Compl. Ex. 3. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

Thirdly, Complainant argues that Respondent registered the <oboz-shoes.com> domain name with actual and/or constructive knowledge of Complainant’s rights in the OBOZ mark. Constructive knowledge has been held by panels not to be sufficient evidence of bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant, however, that actual knowledge can adequately demonstrate bad faith according to Policy ¶ 4(a)(iii). See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). The Panel notes that Respondent’s resolving webpage displays Complainant’s stylized mark, purports to sell footwear, and includes contact information for Complainant. See Compl. Ex. 3. Thus, as the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the mark, it finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the OBOZ mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

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 <oboz-shoes.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Neil Anthony Brown QC

Panelist

Dated:  August 29, 2022

 

 

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