Mycoskie, LLC v. Shawn McGregor
Claim Number: FA1302001488113
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is Shawn McGregor (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <<tomsshoessalemart.com>>, registered with eNom, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2013; the National Arbitration Forum received payment on March 8, 2013.
On March 1, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <tomsshoessalemart.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 March 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@<tomsshoessalemart.com>. Also on March 8, 2013, the 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 April 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 < tomsshoessalemart.com > domain name, the domain name at issue, is confusingly similar to Complainant’s TOMS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns federal common law rights in the use of the TOMS trademarks for use in connection with a multitude of goods, including, but not limited to shoes Complainant is also the owner of several U.S. Federal Trademark registrations and/or applications for the term TOMS (or include the term TOMS term therein) for use in connection with the sale of a variety of goods, but most commonly and most prominently, men's, women's, and children's shoes. The earliest such registration for the mark TOMS appears to be USPTO No. 78816220 registered on October 30, 2007. Complainant's exclusive licensee, TOMS Shoes, Inc., operates as a company under the name TOMS Shoes, Inc., and has done so since at least June 16, 2006 when the company was formed under that name. Complainant, through Complainant's exclusive licensee, has used the TOMS trademarks since at l east April, 2006 in connection with the sale of men's, women's and children’s shoes. Complainant's exclusive licensee has sold such shoes through its primary website located at tomsshoes.com since at least May 7, 2006 as well as its recently acquired toms.com website. As such, the TOMS trademarks serve as source indicators to the relevant consuming public of the source of the goods offered by Complainant’s exclusive licensee.
Respondent owns the domain name <tomsshoessalemart.com> and operates a website located at the <tomsshoessalemart.com> domain name offering for sale shoes, and in particular, shoes that directly compete, and in fact, appear to be counterfeits of the shoes offered for sale by TOMS Shoes, Inc. The disputed domain name was registered on December 26, 2012. Respondent owns no rights (trademark or otherwise) in the TOMS trademarks which could be considered senior or superior to those of Complainant. As such, the use of the <tomsshoessalemart.com> domain name as a Web address to advertise and offer goods identical to the goods offered under Complainant's federally-protected TOMS and federally registered TOMS trademarks is likely to cause (and is believed to have caused) confusion among the relevant consuming public as to the source of the goods.
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 has established its rights in the TOMS mark for the purposes of Policy ¶ 4(a)(i) by having registered the mark with the USPTO. The earliest such registration for the mark TOMS appears to be USPTO No. 78816220 registered on October 30, 2007. Even though it appears that Respondent resides in the USA, the Policy does not require Complainant to register its mark in the same country where Respondent resides and operates. 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 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).
Previous panels have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN). Furthermore, the addition of a generic top-level domain, such as “.com,” is irrelevant in determining similarity of the domain name at issue and the TOMS mark. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); See also, Thomas B. Hudson v. Ted Machi & Associates, Claim No. FA133759 (Nat. Arb. Forum Jan. 21, 2003). Moreover, the addition of a common or generic term to a trademark (“shoessalemart” in this case”) does nothing to reduce the domain name’s confusing similarity. See Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000) (“The addition of a common or generic term following a trademark does not create a new or different mark in which respondent has rights.”); Parfums Christian Dior v. 1 Netpower, Inc., No. D2000-0022 (WIPO March 3, 2000) (finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark).
In this case, the domain name at issue contains the TOMS mark in its entirety, adding only the descriptive term “shoessalesmart” and the top-level domain, .com. These minor differences are insufficient to distinguish the domain name at issue from the TOMS mark.
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
The WHOIS information lists Shawn McGregor as the registrant of the disputed domain name. Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way and that it has not given Respondent permission to use Complainant’s mark in a domain name. Respondent fails to provide additional evidence that it is commonly known by the disputed domain name. Prior panels have found that the respondent was not known by the domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent does not have a legitimate interest in the TOMS brand name or the domain name <tomsshoessalemart.com>. Respondent is not affiliated with Complainant or TOMS. Respondent is neither licensed nor authorized to use the domain name which means that Respondent has no legitimate interest in the domain. Choice Hotels Int’l, Inc. v. Dinoia, No. FA0406000282792 (NAF July 28, 2004) (finding that Respondent lacks rights and legitimate interests in the disputed domain names because Respondent registered the domain names without legal authorization to do so).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The use of the <tomsshoessalemart.com> domain name as an Internet address to advertise and offer goods identical to the goods offered under Complainant's federally-protected TOMS and federally registered TOMS trademarks is likely to cause (and is believed to have caused) confusion among the relevant consuming public as to the source of the goods. Because Respondent is intentionally attracting Internet users to the website at the disputed domain name for its own commercial gain, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Respondent has actual or at least constructive notice of Complainant’s well-known TOMS marks. Respondent is located in a jurisdiction in which Complainant has registered trademark rights. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the fame of Complainant's mark, this Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
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 <tomsshoessalemart.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 6, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page