Allen Edmonds Shoe Corporation v. Fastdomain.com / Fastdomain Inc
Claim Number: FA1107001398469
Complainant is Allen Edmonds Shoe Corporation (“Complainant”), represented by Jennifer L. Gregor of Godfrey & Kahn, S.C., Wisconsin, USA. Respondent is Fastdomain.com / Fastdomain Inc (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allenedmondssale.net>, registered with FASTDOMAIN, INC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2011; the National Arbitration Forum received payment on July 13, 2011.
On July 19, 2011, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <allenedmondssale.net> domain name is registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the name. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, INC. 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 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@allenedmondssale.net. Also on July 20, 2011, the 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 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <allenedmondssale.net> domain name is confusingly similar to Complainant’s ALLEN EDMONDS mark.
2. Respondent does not have any rights or legitimate interests in the <allenedmondssale.net> domain name.
3. Respondent registered and used the <allenedmondssale.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Allen Edmonds Shoe Corporation, is the owner of the ALLEN EDMONDS mark which it uses in connection with the sale of men’s belts, shoes, and shoe accessories. Complainant has several registrations for its ALLEN EDMONDS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 822,911 registered January 24, 1967).
Respondent, Fastdomain.com / Fastdomain Inc, registered the <allenedmondssale.net> domain name on June 26, 2011. The disputed domain name resolves to a website which contains a variety of tabs, some of which displays advertisements for competing shoe companies and 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 asserts that it has established its rights in the ALLEN EDMONDS mark. The registration of a mark with a federal trademark authority is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also 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). Complainant has provided the Panel with evidence of the registration of its mark with the USPTO for the ALLEN EDMONDS mark (e.g., Reg. No. 822,911 registered January 24, 1967). The Panel finds that Complainant does have rights and legitimate interests in the ALLEN EDMONDS mark under Policy ¶ 4(a)(i).
Respondents often register domain names which are confusingly similar to a registered mark. This is done by incorporating a registered mark within a domain name and making subtle changes such as adding terms and punctuation. However, despite the respondent’s attempt to evade a finding of confusing similarity, the changes made frequently fail do to so. Previous panels have found that the elimination of spaces between words in a mark and the addition of a generic top-level domain (“gTLD”) are insufficient to distinguish a domain name from the mark within it. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Furthermore, the addition of a generic term is an insubstantial change for the purposes of 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 Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) (finding the <porschesales.com> domain name to be confusingly similar where the respondent added the generic term “sales” to the complainant’s PORSCHE mark). Respondent has made no changes beyond the elimination of a space between the terms of the mark, the addition of the gTLD “.net,” and the addition of the generic term “sale” to the ALLEN EDMONDS mark within the <allenedmondssale.net> domain name. The Panel thus finds that the <allenedmondssale.net> domain name is confusingly similar to Complainant’s ALLEN EDMONDS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant contends that Respondent does not possess rights or legitimate interests in the <allenedmondssale.net> domain name. Once a complainant has made a prima facie case in support of the allegations it makes, the burden shifts to the respondent to contradict the claims. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel, finding that Complainant has made a prima facie case in support of this, looks to Respondent to disprove these claims. However, Respondent failed to submit a Response to the Complaint. This gives the Panel leave to assume that Complainant’s claims are true. See 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.”); 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). Regardless, the Panel will review the record for information suggesting that Respondent does have rights or legitimate interests in the <allenedmondssale.net> domain name.
Complainant contends that Respondent is not commonly known by the <allenedmondssale.net> domain name. Complainant contends that Respondent has not been permitted or authorized to use the ALLEN EDMONDS mark in any way. Additionally, the WHOIS record for the <allenedmondssale.net> domain name lists “Fastdomain.com / Fastdomain Inc” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant additionally argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services or a legitimate noncommercial or fair use. Respondent’s <allenedmondssale.net> domain name resolves to a website which displays advertisements to products and companies which compete with Complainant’s belt, shoe, and shoe accessories sales. Previous panels have found that this use of a disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See 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).”); 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).”). Therefore, the Panel finds that Respondent’s use of the disputed domain name is not within the realm of protected uses under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) is met.
Complainant asserts that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business. Past panels have found, in cases such as David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) and Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), that domain names that resolve to websites which advertise companies and products that compete with the complainant are disruptive. Respondent’s <allenedmondssale.net> domain name resolves to a website which does just that: displays advertisements for competing shoe companies and their products. Therefore, the Panel finds that the <allenedmondssale.net> domain name’s registration and use disrupts Complainant’s sale of men’s belts, shoes, and shoe accessories, and is evidence of Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).
A respondent may not register and use a disputed domain name which is likely to confuse Internet users as to the affiliation of the domain name to the complainant in order to profit off of the confusion. Using a domain name to display advertisements to competing companies has been found to demonstrate bad faith in this way. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a misspelling of the complainant’s famous mark to attract Internet users to a series of advertisements). The <allenedmondssale.net> domain name resolves to a website which displays advertisements for Complainant’s competitors. Presumably, Respondent garners a profit from the display of these advertisements. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name has been done in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <allenedmondssale.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 24, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page