Vans, Inc. v. Economic a/k/a Jatkey Lance
Claim Number: FA1309001519043
Complainant is Vans, Inc. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Economic a/k/a Jatkey Lance (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vansoutletshoessale.com>, registered with Name.com LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2013; the National Arbitration Forum received payment on September 12, 2013.
On September 11, 2013, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <vansoutletshoessale.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the names. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 September 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@vansoutletshoessale.com. Also on September 12, 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 October 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <vansoutletshoesale.com> domain name is confusingly similar to Complainant’s VANS mark.
2. Respondent does not have any rights or legitimate interests in the <vansoutletshoesale.com> domain name.
3. Respondent registered and uses the <vansoutletshoesale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the VANS mark, used in connection with the sale of shoes and other apparel. Complainant holds a registration for its VANS mark with the United States Patent and Trademark Office (“USPTO”) (See Reg. No. 1,746,195 registered Jan 12, 1993).
Respondent registered the <vansoutletshoessale.com> domain name on March 29, 2013, and uses it to resolve to a website selling counterfeit goods bearing Complainant’s VANS mark.
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.”).
The Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) through its registration of the VANS mark with the USPTO. 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.”).
Respondent’s <vansoutletshoessale.com> domain name includes Complainant’s mark in its entirety and adds the generic terms “outlet,” “shoes,” and “sale,” which are descriptive of the possible locations that Complainant sells its products. The addition of descriptive terms does not sufficiently distinguish the disputed domain name from Complainant’s mark. See m. 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)). The addition of a gTLD is irrelevant in regards to Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s <vansoutletshoessale.com> domain name is confusingly similar to Complainant’s VANS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends Respondent does not own any rights or legitimate interests in the <vansoutletshoessale.com> domain name, and is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists “economic” and “jatkey lance” as the domain name registrant. Complainant states it has not authorized Respondent to use its mark. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the VANS mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <vansoutletshoessale.com> domain name.
Complainant claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent is selling counterfeit goods bearing Complainant’s VANS mark in an attempt to pass itself off as Complainant. Past panels have found that selling counterfeit goods does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See World Wrestling Entertainment, Inc. v. xie yue hong / Li xiao, FA 1511882 (Nat. Arb. Forum Aug. 30, 2013) (finding that Respondent’s unauthorized sale of these counterfeit goods does not create either a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use). Thus, the Panel finds that Respondent is not making 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).
Respondent’s attempt to pass itself off as Complainant further demonstrates that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). The Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant states that Respondent’s use of the disputed domain name to sell counterfeit goods is disrupting Complainant’s business by competing directly with Complainant. Past panels have found that selling counterfeit goods via a domain name that is substantially similar to a complainant’s mark constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that the respondent’s disputed domain name disrupted the complainant’s business and was evidence of bad faith registration and use where Internet users looking for the complainant’s website may instead find respondent’s website and purchase counterfeit goods on the disputed domain name as a result). The Panel similarly finds that Respondent is disrupting Complainant’s business by selling competing goods, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
Respondent is using the <vansoutletshoessale.com> domain name to divert Internet users from Complainant’s website to Respondent’s website selling counterfeit goods for Respondent’s commercial gain. Past panels have found that intentionally misleading Internet users to a disputed domain name for a respondent’s own commercial gain by way of the sale of counterfeit goods constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent to have registered and used the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood that Internet users may find a respondent’s website whilst searching for the complainant’s website, become confused as to the affiliation with or sponsorship of the disputed domain name to the complainant, and purchase goods through the disputed domain name rather than through the complainant). The Panel finds that Respondent is use of the <vansoutletshoessale.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
Respondent’s attempt to pass itself off as Complainant is further evidence of bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant claims that Respondent had knowledge of Complainant’s mark prior to registering the <vansoutletshoessale.com> domain name because due to Complainant’s widespread use of its VANS mark. The Panel agrees and finds that Respondent had actual notice of Complainant's mark, also demonstrated by Respondent’s sale of counterfeit VANS goods, and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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 Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vansoutletshoessale.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 11, 2013
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