Dooney & Bourke, Inc. v. Hao Chen
Claim Number: FA1101001367861
Complainant is Dooney & Bourke, Inc. (“Complainant”), represented by Edward B. Chansky of Greenberg Traurig, LLP, Nevada, USA. Respondent is hao chen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dooneyandbourkeoutlet.org>, registered with Hichina Zhicheng Technology Limited (R1373-LROR).
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 14, 2011; the National Arbitration Forum received payment March 2, 2011. The Complaint was submitted in both Chinese and English.
On March 3, 2011, Hichina Zhicheng Technology Limited (R1373-LROR) confirmed by e-mail to the National Arbitration Forum that the <dooneyandbourkeoutlet.org> domain name is registered with Hichina Zhicheng Technology Limited (R1373-LROR) and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Limited (R1373-LROR) has verified that Respondent is bound by the Hichina Zhicheng Technology Limited (R1373-LROR) 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 March 14, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 4, 2011, 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@dooneyandbourkeoutlet.org. Also on March 14, 2011, 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 April 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 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.
On February 3, 2011, Complainant requested that the Complaint be withdrawn pursuant to Forum Supp. Rule 12(a). The request was granted on February 4, 2011. The Complaint was subsequently translated into Chinese and an Amended Complaint was submitted on March 11, 2011, as necessary.
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. The domain name that Respondent registered, <dooneyandbourkeoutlet.org>, is confusingly similar to Complainant’s DOUNEY & BOURKE mark.
2. Respondent has no rights to or legitimate interests in the <dooneyandbourkeoutlet.org> domain name.
3. Respondent registered and used the <dooneyandbourkeoutlet.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dooney & Bourke, Inc., owns the exclusive rights to the DOONEY & BOURKE mark, which it uses in connection with its sale of accessories, namely handbags. Complainant sells its products in retail stores, online, and in outlet stores worldwide. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its DOONEY & BOURKE mark (e.g., Reg. No. 1,565,245 issued November 7, 1989).
Respondent, Hao Chen, registered the <dooneyandbourkeoutlet.org> domain name August 21, 2010, some twenty years after Complainant’s legal rights were established. The disputed domain name resolves to a retail website featuring the unauthorized sale of Complainant’s goods, as well as, counterfeit products of Complainant. Further, the site features pictures copied directly from Complainant’s official website.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Previous panels have determined that trademark registration with a governmental trademark authority is sufficient to establish rights in a mark for purposes of the Policy. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); 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). Accordingly, Complainant demonstrates rights in its DOONEY & BOURKE mark through its registration with the USPTO (e.g., Reg. No. 1,565,245 issued November 7, 1989). Therefore, the Panel finds that Complainant has rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <dooneyandbourkeoutlet.org> domain name is confusingly similar to Complainant’s DOONEY & BOURKE mark. The disputed domain name contains Complainant’s entire DOONEY & BOURKE mark, replaces the “&” with the word “and,” removes the spaces between the words, adds the descriptive term “outlet,” and adds the generic top-level domain (“gTLD”) “.org.” Previous panels have determined that removal of spaces, replacement of a symbol with a word, and addition of a gTLD are insufficient to distinguish a domain name from the mark under a Policy ¶ 4(a)(i) analysis because spaces and symbols are not reproducible in a domain name and a gTLD is a required element. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL). Additionally, addition of a descriptive term to a complainant’s mark does not distinguish the disputed domain name from the mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Therefore, pursuant to Policy ¶ 4(a)(i), this Panel finds that Respondent’s <dooneyandbourkeoutlet.org> domain name is confusingly similar to Complainant’s DOONEY & BOURKE mark.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have rights to or legitimate interests in the <dooneyandbourkeoutlet.org> domain name. Complainant must make a prima facie case to support its allegations that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant does so, the burden of proof shifts to the Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant made a prima facie case. Given Respondent’s failure to respond to the complaint, the Panel is allowed to make an inference that Respondent does not have rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nonetheless, this Panel still examines the record to determine if evidence in the record suggests that Respondent does have rights pursuant to Policy ¶ 4(c).
Complainant asserts that it can find no evidence that Respondent is commonly known by the disputed domain name and that Complainant has not authorized Respondent to use the DOONEY & BOURKE mark. Further, the WHOIS information identifies the domain name registrant as “Hao Chen.” Therefore, the Panel finds that the record shows on its face that Respondent has not been commonly known by the <dooneyandbourkeoutlet.org> domain name and cannot shows rights and legitimate interests under a Policy ¶ 4(c)(ii) analysis. 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain name to operate its own retail site where it offers for sale unauthorized products of Complainant and counterfeit versions of Complainant’s products. The Panel finds that such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).
The Panel finds that Respondent has no rights to or legitimate interest in the disputed domain name; Complainant satisfied the elements of ICANN Policy 4(a)(ii).
Complainant also urges that Respondent registered and used the disputed domain name in bad faith. Respondent is using the disputed domain name to attempt to compete with Complainant, and is using the domain to sell Complainant’s goods in both unauthorized and counterfeit versions. The Panel finds that such competing use is a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)).
Complainant contends that Respondent takes advantage of the confusingly similar <dooneyandbourkeoutlet.org> domain name by trying to attract Internet users who are likely seeking Complainant’s official site. Complainant asserts that Respondent likely profits from the confusion that is created when it sells Complainant’s goods. The Panel finds this to be evidence to support findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also 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)).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dooneyandbourkeoutlet.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 20, 2011.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page