Mycoskie, LLC v. zheng qing
Claim Number: FA1303001488243
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is zheng qing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tomtomsshoes.com>, registered with JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD.
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.
On March 3, 2013, JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD confirmed by e-mail to the National Arbitration Forum that the <tomtomsshoes.com> domain name is registered with JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD and that Respondent is the current registrant of the names. JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD has verified that Respondent is bound by the JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD 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 11, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 1, 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@tomtomsshoes.com. Also on March 11, 2013, 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 April 9, 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.
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 <tomtomsshoes.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, Mycoskie, LLC, is the owner of several U.S. Federal Trademark registrations and/or applications for the term TOMS 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. 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’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. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TOMS mark (e.g., Reg. No. 877,771, registered December 11, 2007) and for the TOMS SHOES FOR TOMORROW mark (Reg. No. 3,327,341, registered October 30, 2007).
Respondent’s <tomtomsshoes.com> is confusingly similar to Complainant’s TOMS mark given that the second portion of Respondent’s second-level domain, “tomsshoes” is identical to Complainant’s federally-protected TOMS and TOMS SHOES marks, and the first part is merely a repetition of a form of the TOMS mark, and the connotation and commercial impression thereof is identical. Respondent is not known by the domain name and operates as a counterfeiter, selling counterfeit TOMS goods to unsuspecting consumers. In this regard, Respondent operates a phishing site, for the purpose of obtaining TOMS customers’ credit card information. Accordingly, Respondent has registered the domain name <tomtomsshoes.com> to disrupt the business of Complainant and Complainant’s exclusive licensee by attracting Internet traffic to Respondent’s website and by intentionally creating actual confusion with Complainant’s marks. Respondent registered the domain name having actual knowledge of Complainant’s preexisting trademark rights in the TOMS trademarks and the use of the same in connection with the sale of shoes. Respondent registered the <tomtomsshoes.com> domain name on March 10, 2012.
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, Mycoskie, LLC, is the owner of several U.S. Federal Trademark registrations and/or applications for the term TOMS 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. Complainant, its 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’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. Complainant is the owner of trademark registrations with the USPTO for the TOMS mark (e.g., Reg. No. 877,771, registered December 11, 2007) and for the TOMS SHOES FOR TOMORROW mark (Reg. No. 3,327,341, registered October 30, 2007). Although Respondent appears to reside in China, the Panel finds that it is irrelevant whether Complainant has registered its trademark in the country of Respondent’s business under Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, Complainant’s registration of the TOMS mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <tomtomsshoes.com> is confusingly similar to Complainant’s TOMS mark given that the second portion of Respondent’s second-level domain, “tomsshoes” is identical to Complainant’s federally-protected TOMS and TOMS SHOES marks, and the first part is merely a repetition of a form of the TOMS mark, and the connotation and commercial impression thereof is identical. The additional term “tom” is descriptive of Complainant’s business. The addition of a descriptive term is confusingly similar under Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, Respondent’s <tomtomsshoes.com> is confusingly similar to Complainant’s TOMS mark under Policy ¶ 4(a)(i).
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.”).
Respondent is not known by the domain name. Respondent is not now known by and has never used and/or traded under the name “TOMS” or “TOMSSHOES” or “TOMTOMSSHOES” names. The WHOIS information for the disputed domain name lists “zheng qing” as the registrant. Accordingly, 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).
Respondent operates as a counterfeiter, whose purpose is to sell counterfeit TOMS goods to unsuspecting consumers. Respondent’s disputed domain name resolves to a website that sells counterfeit TOMS products. Respondent’s use of the disputed domain name to sell counterfeit TOMS goods is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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).”).
Further, Respondent also operates as a phishing site, which purpose is to steal and use consumers’ credit card numbers. Respondent’s disputed domain name resolves to a website that asks customers to enter their first name and email address. Respondent’s use of the disputed domain name to phish for consumers’ personal information is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has registered the domain name <tomtomsshoes.com> to disrupt the business of Complainant and Complainant’s exclusive licensee by attracting Internet traffic to Respondent’s website and by intentionally creating actual confusion with Complainant’s marks. Respondent’s disputed domain name resolves to a website that sells counterfeit TOMS products. Respondent’s use of the disputed domain to sell counterfeit TOMS products disrupts Complainant’s business under Policy ¶ 4(b)(iii), evidencing bad faith use and registration. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). Respondent’s disputed domain name resolves to a website that sells counterfeit TOMS products. Customers who are already aware of Complainant’s trademarks and Complainant’s exclusive licensee’s business could inadvertently end up (and likely have) at Respondent’s website by typing in the <tomtomsshoes.com> domain name or by typing “TOMS SHOES” into a search engine and thereafter being mistakenly directed to Respondent’s website. Complainant contends that when customers see precisely the same type of goods being offered at that site, and in fact counterfeit versions of Complainant’s licensee’s own goods, such customers, already seeking shoes, certainly would be confused as to the source of those goods. Accordingly, Respondent’s sale of counterfeit goods may be for Respondent’s own commercial gain. Respondent’s use of the disputed domain to sell counterfeit TOMS products diverts Internet traffic away from Complainant, demonstrating bad faith use and registration 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).
Respondent registered the domain name having actual knowledge of Complainant’s preexisting trademark rights in the TOMS trademarks and the use of the same in connection with the sale of shoes. Respondent’s disputed domain name resolves to a website that sells counterfeit TOMS products. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due Respondent’s use of the domain name to sell Complainant’s counterfeit products, 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 <tomtomsshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 14, 2013
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