C. & J. Clark International Limited v. xu susan
Claim Number: FA1212001474767
Complainant is C. & J. Clark International Limited (“Complainant”), represented by Stephen P. McNamara of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is xu susan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clarkshoessale.net>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2012; the National Arbitration Forum received payment on December 7, 2012. The Complaint was received in both English and Chinese.
On December 17, 2012, Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <clarkshoessale.net> 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 December 26, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 15, 2013 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@clarkshoessale.net. Also on December 26, 2012, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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 issues 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 name be transferred from Respondent to Complainant.
i. Respondent has no relationship with or permission from Complainant to use the CLARKS mark, or any variation thereof. There is no connection between the disputed domain name and Respondent.
ii. Respondent uses the disputed domain name to operate a website that advertises and sells counterfeit versions of Complainant’s shoe products under the names of the products offered by Complainant.
i. Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s goods under the CLARKS mark is evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). It is clear that Respondent has created a likelihood of confusion as to Complainant’s involvement and sponsorship of the disputed domain name for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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."
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.
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.”).
Complainant claims that it is the owner of the internationally famous CLARKS mark that it uses for selling shoes and other footwear products for men, women, and children. Complainant notes that it owns several trademark registrations for the CLARKS mark with the USPTO (e.g. Reg. No. 691,307 registered Jan. 12, 1960) and the SAIC (e.g., Reg. No. 3963431 registered Oct. 7, 2009). The Panel determines that Complainant has established rights in the CLARKS mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and SAIC. See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Further, Complainant argues that Respondent’s <clarkshoessale.net> domain name is confusingly similar to the CLARKS mark, only adding the generic terms “shoes” and “sale” as well as the gTLD “.net” to the mark. However, the Panel notes that the disputed domain name removes the letter “s” from Complainant’s marks while adding the term “shoes,” which the Panel finds to be descriptive of Complainant’s products, and the generic term “sale.” The Panel finds that such changes to Complainant’s mark do not remove the disputed domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); 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)); see also 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).
Complainant has proven this element.
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent has no relationship with or permission from Complainant to use the CLARKS mark, or any variation thereof. Further, Complainant argues that there is no connection between the disputed domain name and Respondent. The Panel notes that the WHOIS information for the disputed domain name identifies “xu susan” as the registrant. Based upon such evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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).
Complainant also claims that Respondent uses the disputed domain name to operate a website that advertises and sells counterfeit versions of Complainant’s shoe products under the names of the products offered by Complainant. Prior panels have determined that operating a website that purports to sell goods made by a complainant but which are in fact counterfeit versions of those products does not amount to 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 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 is not using the <clarkshoessale.net> domain name for 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).
Complainant
has proven this element.
Complainant argues that Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s goods under the CLARKS mark is evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). Complainant asserts that it is clear that Respondent has created a likelihood of confusion as to Complainant’s involvement and sponsorship of the disputed domain name for commercial gain. The Panel finds that Respondent has registered and is using the <clarkshoessale.net> domain name in bad faith under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <clarkshoessale.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 25, 2013
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