C. & J. Clark International Limited v. Lu Shanhua a/k/a shanhua lu
Claim Number: FA1105001388854
Complainant is C. & J. Clark International Limited (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Lu Shanhua a/k/a shanhua lu (“Respondent”), Yemen
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <clark-show.com> and <clark365.com>, registered with JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2011; the National Arbitration Forum received payment on May 16, 2011. The Complaint was submitted in both English and Chinese.
On May 16, 2011, JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD confirmed by e-mail to the National Arbitration Forum that the <clark-show.com> and <clark365.com> domain names are registered with JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD and that Respondent is the current registrant of the names. JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD has verified that Respondent is bound by the JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD 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 May 20, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 9, 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@clark-show.com and postmaster@clark365.com. Also on May 20, 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 June 14 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 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.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <clark-show.com> and <clark365.com> domain names are confusingly similar to Complainant’s CLARKS mark.
2. Respondent does not have any rights or legitimate interests in the <clark-show.com> and <clark365.com> domain names.
3. Respondent registered and used the <clark-show.com> and <clark365.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, C. & J. Clark International Limited, is the owner of the CLARKS mark, which it uses in connection with the design, manufacture, distribution, and operation of retail stores selling shoes for men, women, and children. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 691,307 issued January 12, 1960).
Respondent, Lu Shanhua a/k/a shanhua lu, registered the disputed domain names on January 3, 2011. The disputed domain names resolve to a website that sells counterfeit versions of Complainant’s footwear products.
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.
Complainant contends that it has established rights in the CLARKS mark. Previous panels have found that registration with a federal trademark authority is sufficient to establish rights in a mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, SENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Additionally, previous panels have also held that the country in which the trademark is registered need not be the country in which respondent operates or resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). In this case, Complainant has provided evidence of its registration of the CLARKS mark with the USPTO (e.g., Reg. No. 691,307 issued January 12, 1960). Therefore, the Panel finds that Complainant has established rights in the CLARKS mark through Complainant’s trademark registration.
Complainant contends that Respondent’s <clark-show.com> and <clark365.com> domain names are confusingly similar to Complainant’s CLARKS mark. In each of the disputed domain names, the letter “s” has been deleted and the generic top-level domain (“gTLD”) “.com” has been added. The Panel finds that the deletion of one letter and the addition of a gTLD fail to distinguish the disputed domain names from Complainant’s mark. See Reuters Ltd. V. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also 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). The addition of a hyphen and the generic word “show” in the <clark-show.com> disputed domain name fails to distinguish it from Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Finally, the addition of the numbers “365” likewise do not distinguish the <clark365.com> disputed domain name from Complainant’s mark. 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)). Therefore, the Panel concludes that Respondent’s <clark-show.com> and <clark365.com> domain names are confusingly similar to Complainant’s CLARKS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant alleges that Respondent lacks rights and legitimate interests in the <clark-show.com> and <clark365.com> domain names. Previous panels have found that when 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 interest pursuant to Policy ¶ 4(a)(ii). The Panel finds that 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 <clark-show.com> and <clark365.com> domain names. The Panel will, however, 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 (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 Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations…unless clearly contradicted by the evidence.”).
Complainant alleges that Respondent is not commonly known by the <clark-show.com> and <clark365.com> domain names. Complainant argues that Respondent has not presented any evidence that would support a finding that Respondent is commonly known by the domain names. Complainant claims that Respondent has no relationship with, or permission from, Complainant to register or use the disputed domain names or to use the CLARKS mark, and that there is no person named “Clarks” associated with Respondent. The Panel finds no evidence in the record or the WHOIS information that would provide a basis for finding that Respondent is commonly known by the disputed domain names. As such, the Panel finds that Respondent is not commonly known by the <clark-show.com> and <clark365.com> domain names under Policy ¶ 4(c)(ii). See 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); see also 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).
Respondent uses the <clark-show.com> and <clark365.com> domain names to sell counterfeit versions of Complainant’s footwear products. Respondent likely garners an income from the sale of the counterfeit footwear by capitalizing on Complainant’s CLARKS mark. The Panel finds that Respondent’s use of confusingly similar disputed domain names to operate a website selling counterfeit products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversoines 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).”); see also 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <clark-show.com> and <clark365.com> domain names resolve to a website featuring counterfeit versions of Complainant’s products. Complainant alleges that Respondent’s registration and use of the disputed domain names disrupts its business because Internet users intending to purchase footwear from Complainant may purchase the same products from Respondent as a result of Respondent’s use of the disputed domain names. Thus, the Respondent is in direct competition with Complainant’s business. The Panel finds that Respondent’s registration and use of the <clark-show.com> and <clark365.com> domain names does disrupt Complainant’s retail footwear business, which constitutes bad faith under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant’s business and create user confusion); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent presumably receives monetary gain for all sales made on the website resolving from the <clark-show.com> and <clark365.com> disputed domain names. Internet users searching for Complainant may find Respondent’s website instead because of Respondent’s use of confusingly similar disputed domain names. Internet users may then become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name and featured products. Respondent attempts to profit from this confusion by offering counterfeit versions of Complainant’s products. The Panel finds that Respondent’s use of the disputed domain names 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 names, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
Complainant alleges Respondent displays the CLARKS mark prominently on the website resolving from the disputed domain names. The Panel infers that Respondent’s intention in using Complainant’s logo was to implicate that Respondent’s disputed domain names were permissibly associated with Complainant’s mark. The Panel finds that Respondent intended to pass off the disputed domain names and resolving website as being affiliated with Complainant’s mark. The Panel finds that Respondent’s actions constitute additional bad faith pursuant to Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced…Complainant’s TARGET mark…[and] added Complainant’s distinctive red bull’s eye [at the domain name] … to a point of being indistinguishable from the original.”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
The Panel finds the elements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clark-show.com> and <clark365.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 17, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page