Rockport IP Holdings, LLC v. Trang Huy
Claim Number: FA1907001852887
Complainant is Rockport IP Holdings, LLC ("Complainant"), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Trang Huy ("Respondent"), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dunhamshoes.com>, registered with NameSilo, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2019; the Forum received payment on July 19, 2019.
On July 19, 2019, NameSilo, LLC confirmed by email to the Forum that the <dunhamshoes.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 July 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@dunhamshoes.com. Also on July 29, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
A. Complainant
Complainant and its licensees design, manufacture, and distribute footwear, selling millions of pairs of shoes worldwide each year. Complainant and its predecessors in interest have used the DUNHAM mark in connection with this business since 1885, and Complainant owns longstanding U.S. trademark registrations for DUNHAM.
Respondent registered the disputed domain name <dunhamshoes.com> in the name of a privacy registration service in April 2017, and subsequently began using the domain name for a website purporting to sell Complainant's products. In fact the website merely redirects users to Complainant's products on Amazon via affiliate links, presumably generating commission revenue for Respondent. Respondent's website contains photographs of Complainant's products copied from Complainant's own website. An inconspicuous disclaimer at the bottom of the page states that Respondent's website participates in Amazon's Associates Program, but does not disclose Respondent's relationship, or lack of a relationship, with Complainant. Complainant states that Respondent has no relationship with Complainant nor permission from Complainant to use the DUNHAM mark.
Complainant contends on the above grounds that the disputed domain name <dunhamshoes.com> is confusingly similar to its DUNHAM mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <dunhamshoes.com> incorporates Complainant's registered DUNHAM trademark, adding the generic term "shoes" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Crocs, Inc. v. Domain Hostmaster, Customer ID: 99450997824265, Whois Privacy Services Pty Ltd / Lisa Katz, Domain Protection LLC, D2016-1882 (WIPO Nov. 8, 2016) (finding <crocs-shoes.com> confusingly similar to CROCS); Zappos.com, Inc. v. RENATA Svensdotter, FA 624407 (Forum Feb. 22, 2006) (finding <zapposshoes.com> confusingly similar to ZAPPOS.COM). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to profit from links to Complainant's products on a third-party website in a manner likely to mislead users into believing that Respondent is connected with Complainant. Such use is unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., Deltona Transformer Corp. v. LL Nicholls, FA 1532023 (Forum Jan. 2, 2014) (finding lack of rights or legitimate interests where domain name corresponding to trademark was used for website redirecting users to genuine trademarked products on Amazon but in manner likely to mislead consumers into believing website was associated with trademark owner); Merck & Co., Inc., Schering Corp. v. Apiwat Ngunbunsri, D2011-0050 (WIPO Mar. 4, 2011) (finding lack of rights or legitimate interests where domain name corresponding to trademark was used to redirect to genuine trademarked products on Amazon without clear disclosure of respondent's lack of relationship with trademark owner).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's registered mark and is using it to profit from a misleading website containing affiliate links to products on a third-party website. Such conduct demonstrates bad faith under the Policy. See, e.g., Deltona Transformer Corp. v. LL Nicholls, supra (finding bad faith under paragraph 4(b)(iii) in similar circumstances); Merck & Co., Inc., Schering Corp. v. Apiwat Ngunbunsri, supra (finding bad faith under paragraphs 4(b)(iii) and 4(b)(iv) in similar circumstances). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dunhamshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 26, 2019
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