Koolaburra, LLC v. guo zhenpai / ke engao
Claim Number: FA1110001411392
Complainant is Koolaburra, LLC (“Complainant”), represented by Dan Harris of Harris & Moure pllc, Washington, USA. Respondent is guo zhenpai / ke engao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <koolaburra-boots.net> and <koolaburrasales.com>, registered with GoDaddy.com, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2011; the National Arbitration Forum received payment on October 13, 2011.
On October 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <koolaburra-boots.net> and <koolaburrasales.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 October 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@koolaburra-boots.net, postmaster@koolaburrasales.com. Also on October 19, 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 November 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <koolaburra-boots.net> and <koolaburrasales.com> domain names are confusingly similar to Complainant’s KOOLABURRA mark.
2. Respondent does not have any rights or legitimate interests in the <koolaburra-boots.net> and <koolaburrasales.com> domain names.
3. Respondent registered and used the <koolaburra-boots.net> and <koolaburrasales.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Koolaburra, LLC, is a large global provider of footwear, primarily boots. Complainant owns a federal trademark registration for the KOOLABURRA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,415,053 registered December 26, 2000), as well as an international trademark registration obtained under the Madrid Protocol with the World Intellectual Property Organization (“WIPO”) (Reg. No. 894,788 registered June 21, 2006) and accepted by the Office for the Harmonization in the Internal Market (“OHIM”) on February 8, 2007, the Japan Patent Office (“JPO”) on July 12, 2007, and the Korean Intellectual Property Office (“KIPO”) on January 15, 2008. Complainant uses the mark to market and promote its boot and apparel products.
Respondent, guo zhenpai / ke engao, registered the <koolaburra-boots.net> domain name on June 3, 2011 and the <koolaburrasales.com> domain name on May 15, 2011. The disputed domain names resolve to a website offering boots for sale. The boots offered are touted as “Koolaburra” boots; however, they are in fact counterfeit versions of Complainant’s boots.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Based on the similar WHOIS information and content of the resolving websites, the Panel determines that the disputed domain names are controlled by the same entity.
Complainant contends that it has established its rights in the KOOLABURRA mark by registering that mark with the USPTO (Reg. No. 2,415,053 registered December 26, 2000) and under the Madrid Protocol with WIPO (Reg. No. 894,788 registered June 21, 2006), which has been accepted by the OHIM on February 8, 2007, the JPO on July 12, 2007, and the KIPO on January 15, 2008. Complainant has submitted sufficient evidence to establish that the mark is duly registered and that it is the owner of the registrations related to the mark. Therefore, the Panel finds that Complainant has established its rights in the KOOLABURRA mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘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).
Complainant also contends that Respondent’s <koolaburra-boots.net> and <koolaburrasales.com> domain names are confusingly similar to its KOOLABURRA mark. The disputed domain names both include the mark in its entirety along with the generic term “sales,” the descriptive term “boots,” and the generic top-level domains (“gTLD”) “.com” and “.net.” The <koolaburra-boots.net> domain name also includes a hyphen. The Panel finds that that disputed domain names still retain the distinctive characteristics of Complainant’s KOOLABURRA mark; thereby making the disputed domain names confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has successfully met its prima facie burden under Policy ¶ 4(a)(ii) shifting the burden of proof under this provision to Respondent. 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.”). Respondent has failed to file a Response in this action, which allows the Panel to assume that it lacks rights or legitimate interests in the disputed domain names. 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). The Panel will examine the evidence on record and make a determination regarding Respondent’s rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(i) in accordance with the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information for the disputed domain names identifies the registrants as separate individuals “guo zhenpai” and “ke engao.” Respondent has offered no evidence to support a finding to the contrary of Complainant’s assertion. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the WHOIS information and the evidence currently on record. See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The disputed domain names resolve to a website selling Koolaburra branded counterfeit boots and shoes. Respondent holds out the goods sold on the website to be from Complainant when they are not. The Panel finds that selling counterfeit boots purporting to be from Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See 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).”); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant argues that Respondent’s disputed domain names disrupt its business, supporting a finding of bad faith registration and use. The disputed domain names resolve to websites selling goods that appear to be from Complainant. However, Respondent is not authorized to sell Complainant’s goods, and the boots offered from the site are counterfeit versions of Complainant’s products. Internet users may become very confused when they arrive at the website and then purchase goods from Respondent thinking that they are purchasing Complainant’s products. The Panel finds that this use disrupts Complainant’s business and provides affirmative evidence of bad faith registration and use under 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 also argues that Respondent is gaining commercially from the disputed domain names, constituting bad faith registration and use. As mentioned above, Respondent’s disputed domain names resolve to websites offering boots for sale, which bear Complainant’s label. However, the boots are not in fact made by Complainant and are counterfeit or “knock off” versions of Complainant’s products. Respondent presumably generates revenue by selling these boots to Internet users diverted to its websites through the disputed domain names. The Panel finds that this use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Nintendo of Am., Inc. v. Pokemonplanet.net, D2001-1020 (WIPO Sept. 25, 2001) (“By using the [<pokemonplanet.net>] Domain Names [sic] to sell Complainant’s [POKEMON] products, Respondents have shown bad faith in use of the Domain Name.”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <koolaburra-boots.net> and <koolaburrasales.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 29, 2011
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