Heeling Sports Limited v. Trader Star c/o Trader Wang
Claim Number: FA1007001336965
Complainant is Heeling Sports Limited (“Complainant”), represented by Jason R. Fulmer, of Gardere Wynne Sewell LLP, Texas, USA. Respondent is Trader Star c/o Trader Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <heelys516.com>, registered with Xin Net Technology Corporation.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2010. The Complaint was submitted in both Chinese and English.
On July 22, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <heelys516.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 3, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 23, 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@heelys516.com by e-mail. Also on August 3, 2010, the Chinese language 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
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 (the "Rules") "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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <heelys516.com> domain name is confusingly similar to Complainant’s HEELYS mark.
2. Respondent does not have any rights or legitimate interests in the <heelys516.com> domain name.
3. Respondent registered and used the <heelys516.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Heeling Sports Limited, is a designer and manufacturer of athletic and wheeled footwear. Complainant sells its “HEELYS” wheeled footwear in more than 30 countries around the world. Complainant owns trademark registrations for the HEELYS and related marks with the United States Patent and Trademark Office (“USPTO”):
HEELYS Reg. No. 2,693,898 issued March 4, 2003;
HEELYS Reg. No. 2,698,390 issued March 18, 2003;
HEELYS Reg. No. 2,720,347 issued June 3, 2003;
HEELYS Reg. No. 3,679,845 issued September 8, 2009;
HEELYS WORLDWIDE Reg. No. 3,712,007 issued November 17, 2009; &
HEELYS WORLDWIDE Reg. No. 3,805,558 issued June 22, 2010.
Respondent, Trader Star c/o Trader Wang, registered the <heelys516.com> domain name on March 23, 2010. The disputed domain name resolves to a website displaying links to other third-party sellers of footwear.
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.
The Panel finds that Complainant’s USPTO trademark registrations sufficiently establish its rights in the HEELYS mark for the purposes of Policy ¶ 4(a)(i), even though Respondent lives and/or operates in China. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <heelys516.com> domain name is confusingly similar to Complainant’s HEELYS mark because the only additions to Complainant’s mark are the number “516” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding numbers to Complainant’s mark fails to prevent confusing similarity under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the nondistinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.”). The Panel also finds that the presence of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <heelys516.com> domain name is confusingly similar to Complainant’s HEELYS mark.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
The requirements of Policy ¶ 4(a)(ii) dictate that Complainant must present a prima facie when alleging that Respondent lacks rights and legitimate interests in the disputed domain name. In the instant proceedings, the Panel determines that Complainant has satisfied that burden. As a result, the burden now shifts to Respondent to demonstrate that it has rights and legitimate interests in the disputed domain name. By defaulting, however, Respondent has not met this burden and has shown no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). The Panel will consider all the evidence in the record, however, in light of the Policy ¶ 4(c) factors to make an independent determination on whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent has not been authorized to use the HEELYS mark and has no affiliation with Complainant that would give Respondent rights in the mark. Complainant also asserts that Respondent is not commonly known by the <heelys516.com> domain name, as indicated by the WHOIS information, which lists the registrant as “trader star.” The Panel accordingly finds that Complainant is not commonly known by the disputed domain name and lacks rights and legitimate interest under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that the <heelys516.com> domain name resolves to a website that displays third-party links to websites that sell footwear. The Panel finds that featuring links intended to divert Internet users away from Complainant’s website is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <heelys516.com> domain name and the links posted there to divert Internet users away from Complainant’s website to the websites of Complainant’s competitors who also sell footwear. The Panel find s that Respondent’s actions disrupt Complainant’s business and show bad faith registration and use according to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); 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).
Respondent lists various links at the <heelys516.com> domain name, which the Panel presumes are pay-per-click links. Respondent uses Complainant’s mark to attract Complainant’s customers, which Respondent then uses for its own commercial gain when the Internet users click on the displayed links and generate pay-per-click revenue. The Panel finds that Respondent’s use of Complainant’s mark to profit by creating confusion and diverting consumers at Complainant’s expense indicates bad faith registration and use according to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
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 <heelys516.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 14, 2010
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