The North Face Apparel Corp. v. Any
Claim Number: FA1001001302726
Complainant is The North Face Apparel Corp. (“Complainant”), represented by G.
Roxanne Elings, of Greenberg Traurig LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <officialnorthface.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns.com.cn.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2010 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@officialnorthace.com. On January 20, 2010, Written Notice of the Complaint, setting a deadline of February 9, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@officialnorthface.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <officialnorthface.com> domain name is confusingly similar to Complainant’s THE NORTH FACE mark.
2. Respondent does not have any rights or legitimate interests in the <officialnorthface.com> domain name.
3. Respondent registered and used the <officialnorthface.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The North Face
Apparel Corp., operates an apparel business specializing in camping clothing,
backpacks and other goods. Complainant
has registered it’s the NORTH FACE mark with the Unites States Patent and
Trademark Office (“USPTO”) on May 14, 1974 (Reg. No. 983,624).
Respondent, Any, registered
the disputed domain name on
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Respondent, Any, registered
the disputed domain name on
The Panel finds that Complainant has sufficiently
established rights in the THE NORTH FACE mark under Policy ¶ 4(a)(i) its registration of the mark with the USPTO (Reg. No. 983,624 issued May 14, 1974). See Miller
Brewing
Respondent’s <officialnorthface.com>
domain name is confusingly similar to Complainant’s THE NORTH FACE mark. The disputed domain name contains
Complainant’s THE NORTH FACE mark, substitutes the generic term “official” for
the term “the,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds these alterations are
insufficient to detract from the dominant portion of Complainant’s mark and
thus finds the disputed domain name is confusingly similar to Complainant’s
mark under Policy ¶ 4(a)(i). See
Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding
that the respondent’s domain names were confusingly similar to Complainant’s
GOOGLE mark where the respondent merely added common terms such as “buy” or
“gear” to the end); see also
Buffalo News v. Barry, FA 146919
(Nat. Arb. Forum
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the <officialnorthface.com>
domain name. Once a complainant makes a prima facie case in support of its
allegations, the burden shifts to the respondent to prove that it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel may assume that Respondent does not have rights or
legitimate interests in the <officialnorthface.com>
domain name. However, the Panel will
examine the record to determine whether Respondent has rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate interests
in a domain name); see also Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum
Respondent has
offered no evidence, and there is no evidence in the record, suggesting that
Respondent is commonly known by the <officialnorthface.com>
domain name. Complainant asserts that Respondent is not
authorized to use the THE NORTH FACE mark.
The WHOIS information identifies the domain name registrant as “Any.” Therefore, the Panel finds that Respondent
has not established rights or legitimate interests in the <officialnorthface.com> domain
name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum
Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate
interests in the <emitmortgage.com> domain name as the respondent was not
authorized to register domain names featuring the complainant’s mark and failed
to submit evidence of that it is commonly known by the disputed domain name); see
also St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate
interests in a disputed domain name where there was no evidence in the record
indicating that the respondent was commonly known by the disputed domain name).
Respondent uses the <officialnorthface.com>
domain name to offer competing and
counterfeit camping apparel products in direct competition with
Complainant. The Panel finds this use is
not a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the disputed domain name under Policy ¶
4(c)(iii). See Hewlett-Packard
Co. v. Inversiones HP Milenium
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <officialnorthface.com> domain name to offer counterfeit and camping apparel products. Internet users interested in Complainant’s clothing products may be lead to purchase the counterfeit or competing products because of Respondent’s confusingly similar disputed domain name. The Panel finds Respondent’s use of <officialnorthface.com> domain name disrupts Complainant’s clothing and accessory business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel infers Respondent profits from the sale of counterfeit and competing camping apparel products on the website resolving from the <officialnorthface.com> domain name. Internet users, searching for Complainant’s clothing products, may become confused as to Complainant’s sponsorship or affiliation with the disputed domain name and resolving website. Respondent attempts to profit from this confusion. The Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <officialnorthface.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 3, 2010
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