Allen Edmonds, LLC a/k/a Allen Edmonds Corporation v. fdgjh / qing qiu
Claim Number: FA2006001899187
Complainant is Allen Edmonds, LLC a/k/a Allen Edmonds Corporation (“Complainant”), represented by Caroline Chicoine of HUSCH BLACKWELL LLP, Missouri, USA. Respondent is fdgjh / qing qiu (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allenedmondstore.shop> (‘the Domain Name’), registered with NameSilo, 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 5, 2020; the Forum received payment on June 5, 2020.
On June 8, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <allenedmondstore.shop> 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 June 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2020 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@allenedmondstore.shop. Also on June 9, 2020, 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.
On July 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant is the owner of the mark ALLEN EDMONDS registered, inter alia, in the USA for men’s shoes with first use recorded as 1936.
The Domain Name registered in 2020 is confusingly similar to the Complainant’s trade mark adding only the generic term ‘store’ (omitting the ‘s’ from EDMONDS)
and the gTLD .shop.
The Respondent has no legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The web site attached to the Domain Name has been used to mimic the Complainant’s official web site using its logo, trade dress and a confusing copyright notice. Subsequently the web site attached to the Domain Name was changed (the day after the Complainant took a screenshot) to a web site selling women’s shoes and clothes.
Using the Domain Name for competing commercial purposes to mimic the Complainant’s web site using the Complainant’s logo is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is bad faith use and registration with actual knowledge of the Complainant’s business, disrupting the Complainant’s business and diverting Internet users for commercial gain.
The e mail associated with the web site attached to the Domain Name has been involved in a scam involving another shoe brand.
The contact information provided by Respondent is highly suspect. Complainant could find no “new York, new York, FL” and the area code provided by Respondent is for Phoenix, AZ, not new York, FL.
Respondent’s use of a privacy service further evidences Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark ALLEN EDMONDS registered, inter alia, in the USA for men’s shoes with first use recorded as 1936.
The Domain Name registered in 2020 has been used for a site mimicking the site of the Complainant using its logo, trade dress and a confusing copyright notice, and for another commercial site selling women’s shoes and clothes.
The e mail address associated with the Domain Name has been associated with a scam involving another shoe brand. The Respondent appears to have used false address details and has used a privacy service.
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”).
The Domain Name consists of the Complainant's ALLEN EDMONDS mark (which is registered in USA for men’s shoes with first use recorded as 1936), omitting the ‘s’ and adding both the generic term ‘store’ and the gTLD .shop.
Misspellings such as omission of a letter or letters does not distinguish the Domain Name from the Complainant's trade mark pursuant to the Policy. See Twitch Interactive Inc. v. Zhang qin, FA 1626511 (Forum Aug. 4, 2015).
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘store’ to the Complainant's mark does not distinguish the Domain Name from the Complainant's registered trade mark for the purposes of the Policy.
The gTLD .shop does not serve to prevent confusing similarity between the Domain Name and the Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name The use of the Domain Name is commercial so it is not legitimate non-commercial fair use.
The web site attached to the Domain Name used the Complainant's mark and the Complainant’s logo, trade dress and a copyright notice using the Complainant’s name to offer competing men’s shoes. Subsequently the Domain Name was used to offer women’s shoes and clothing not associated with the Complainant not making it clear that there was no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.)
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
In the opinion of the Panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offered competing shoes and clothes under the Complainant’s mark. Further, when it was offering men’s shoes it used the Complainant’s logo as a masthead, the Complainant’s trade dress and a confusing copyright notice giving the impression that the site attached to the Domain Name was official.
The use of the Complainant’s logo on the site attached to the Domain Name shows that the Respondent has actual knowledge of the Complainant and its business, products and rights.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of that web site or products on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
The Panel also notes that it appears the e mail address associated with the Domain Name has been associated with a scam involving another shoe brand which could be seen as a pattern of activity and that the Respondent appears to have used false address details and has used a privacy service.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(ii), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allenedmondstore.shop> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 7, 2020
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