C. & J. Clark International Limited v. Lin Chen Wei
Claim Number: FA1106001396337
Complainant is C. & J. Clark International Limited (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Lin Chen Wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clarks-shoes-uk.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2011; the National Arbitration Forum received payment on June 29, 2011. The Complaint was submitted in both English and Chinese.
On July 15, 2011, BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN confirmed by e-mail to the National Arbitration Forum that the <clarks-shoes-uk.com> domain name is registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN and that Respondent is the current registrant of the name. BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN has verified that Respondent is bound by the BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN 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 July 21, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 10, 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@clarks-shoes-uk.com. Also on July 21, 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 August 16, 2011, 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 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 a 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 <clarks-shoes-uk.com> domain name is confusingly similar to Complainant’s CLARKS mark.
2. Respondent does not have any rights or legitimate interests in the <clarks-shoes-uk.com> domain name.
3. Respondent registered and used the <clarks-shoes-uk.com> domain name 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. The mark has been registered numerous times with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 691,307 registered January 12, 1960). The mark has also been registered multiple times in China, the country in which Respondent operates, with the State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 3,963,430 registered August 21, 2007). Complainant uses its CLARKS mark in connection with the design, manufacture, distribution, and sale of shoes for men, women, and children.
Respondent, Lin Chen Wei, registered the disputed domain name on August 20, 2010. The disputed domain name resolves to an Internet retail store that sells counterfeit versions of Complainant’s products under Complainant’s CLARKS mark.
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 rights in the CLARKS mark. Through registration with a federal trademark authority, a complainant establishes rights in a mark for the purposes of Policy ¶ 4(a)(i). 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Complainant has provided the Panel with evidence of registration of its CLARKS mark with the USPTO (e.g., Reg. No. 691,307 registered January 12, 1960). The SIPO registrations for the CLARKS mark (e.g., Reg. No. 3,963,430 registered August 21, 2007) have also been provided. The Panel therefore finds that Complainant has established rights in the CLARKS mark for the purposes of Policy ¶ 4(a)(i).
A respondent may not register a domain name that is confusingly similar to a registered trademark. Respondent has failed to make changes sufficient to distinguish the disputed domain name from Complainant’s mark. The addition of the descriptive term “shoes” and the geographic identifier “uk” do not adequately distinguish the mark, but rather increase the likelihood of confusion by simply adding terms which Internet users may interpret as demonstrating that they have found the correct website. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). Similarly, Respondent’s addition of hyphens between the words in its <clarks-shoes-uk.com> domain name fails to be distinguishing. 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 Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Lastly, the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a finding of confusing similarity because a domain name cannot exist without a top-level domain. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). As a result of Respondent’s failure to differentiate the <clarks-shoes-uk.com> domain name from the CLARKS mark, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(i).
Once Complainant has made a prima facie case that Respondent lacks rights and legitimate interests, the burden shifts to the Respondent to prove otherwise. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). Here, the Panel finds that Complainant has made a prima facie case in support of this claim that Respondent has no rights or legitimate interests. Respondent’s failure to submit a response allows the Panel to infer that Complainant’s assertions are accurate. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). The Panel will nonetheless review the record to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant states that no relationship exists between itself and Respondent and that Complainant has not given Respondent the necessary permission to use its CLARKS mark in any way. The WHOIS record lists “Lin Chen Wei” as the domain name registrant for the <clarks-shoes-uk.com> domain name, which does not suggest a connection between the CLARKS mark and Respondent. T herefore, the Panel finds that Respondent is not commonly known by the <clarks-shoes-uk.com> domain name under Policy ¶ 4(c)(ii).
The <clarks-shoes-uk.com> domain name resolves to a website which sells counterfeit versions of Complainant’s shoe products under Complainant’s mark. According to C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) and Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011), the sale of counterfeit products through a disputed domain name’s resolving website is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Given Complainant’s demonstration through extensive screenshots of the <clarks-shoes-uk.com> domain name, the Panel finds that Respondent’s sale of counterfeit CLARKS products does not constitute a use which is protected by either Policy ¶¶ 4(c)(i) or 4(c)(iii).
The use of a disputed domain name, which displays a complainant’s trademark and attempts to pass off as being associated with or sponsored by the complainant is further evidence that the respondent lacks rights and legitimate interests. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Respondent has registered a confusingly similar domain name for an online retail store for shoes where Respondent prominently displays Complainant’s mark repeatedly throughout the resolving website, and includes pictures of packaging containing the CLARKS mark. Additionally, many of the style names of the counterfeit products being sold through the <clarks-shoes-uk.com> domain name are the same as the style names of genuine CLARKS products sold by Complainant. Therefore, the Panel finds that Respondent is attempting to pass itself off as being affiliated with Complainant, demonstrating its lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(ii).
Panels have consistently found that, where a respondent registers and uses a disputed domain name to sell counterfeit products, the respondent has acted in bad faith. See Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that the respondent’s disputed domain name disrupted the complainant’s business and was evidence of bad faith registration and use where Internet users looking for the complainant’s website may instead find respondent’s website and purchase counterfeit goods on the disputed domain name as a result); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding that resolving Internet users to a website selling counterfeit versions of a complainant’s products was disruptive to the complainant’s business and thus evidence of the respondent’s bad faith registration and use of the domain name under Policy 4(b)(iii)). Here, the <clarks-shoes-uk.com> domain name resolves to a website which sells counterfeit versions of Complainant’s CLARKS products. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name is disruptive to Complainant’s sale of shoes under its CLARKS mark, pursuant to Policy ¶ 4(b)(iii).
Respondent has registered and uses the <clarks-shoes-uk.com> domain name for commercial gain due to the likelihood of confusion among Internet users. The disputed domain name resolves to a website which is attempting to pass itself off as being associated with the Complainant and which sells counterfeit versions of Complainant’s shoe products. Internet users will no doubt be confused as to whether the domain name is associated with Complainant. The Panel infers that Respondent profits from the sale of the counterfeit products offered at the website resolving from the disputed domain name. The Panel finds that Respondent registered and used the disputed domain name in bad faith by creating the likelihood of confusion under Policy ¶ 4(b)(iv). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent to have registered and used the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood that Internet users may find a respondent’s website whilst searching for the complainant’s website, become confused as to the affiliation with or sponsorship of the disputed domain name to the complainant, and purchase goods through the disputed domain name rather than through the complainant); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding that where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
As noted above, Respondent uses the confusingly similar domain name, along with the display of Complainant’s mark and style names for products, as well as pictures taken directly from Complainant’s website. The Panel therefore finds that Respondent has attempted to pass off the <clarks-shoes-uk.com> domain name as being associated with Complainant and its CLARKS mark, further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s actions constituted bad faith under Policy ¶ 4(a)(iii) where the respondent intended to pass off the disputed domain names and resolving website as being affiliated with the complainant’s mark); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
The Panel finds that Complainant has satisfied the elements of 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 <clarks-shoes-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 23, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page