Steve Madden, Ltd. v. Faich Child
Claim Number: FA1309001519165
Complainant is Steve Madden, Ltd. (“Complainant”), represented by Robert L. Tucker of Tucker & Latifi, LLP, New York, USA. Respondent is Faich Child (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stevemaddenboots.us>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2013; the National Arbitration Forum received a hard copy on September 16, 2013.
On September 12, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <stevemaddenboots.us> 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 U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 19, 2013, Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 9, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 usTLD Domain Name Dispute Resolution Policy (the "Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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. Complainant contends it has rights in the STEVE MADDEN mark, used in connection with the sale of shoes, boots and accessories. Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,012,115 registered Oct. 29, 1996).
2. Respondent’s <stevemaddenboots.us> domain name is confusingly similar to Complainant’s STEVE MADDEN mark.
3. Respondent does not have any rights or legitimate interests in the <stevemaddenboots.us> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its STEVE MADDEN mark in any way.
b. Respondent is using the disputed domain name to offer Complainant’s goods for sale, and Complainant believes the goods may be counterfeit.
4. Respondent registered and is using the <stevemaddenboots.us> domain name in bad faith.
a. Respondent is intentionally attracting Internet users for commercial gain by creating a likelihood of confusion with Complainant’s STEVE MADDEN mark. Respondent is using the disputed domain name to offer Complainant’s goods for sale, and Complainant believes the goods may be counterfeit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Steve Madden, Ltd. of Long Island City, NY, USA. Complainant is the owner of the USA registered trademark STEVE MADDEN which it has used continuously since at least as early as 1997 in connection with the marketing and sale of clothing, various types of bags, as well as wallets and footwear. Complainant sells its products via retail stores throughout the USA and abroad and also globally via e-commerce on its websites, the primary site being <stevemadden.com>.
Respondent is Faich Child of Hong Kong, China. Respondent’s registrar’s address is listed as Kirkland, WA, USA. Respondent registered the <stevemaddenboots.us> domain name on July 26, 2013.
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 or 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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends it has rights in the STEVE MADDEN mark, used in connection with the sale of shoes, boots and accessories. Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,012,115 registered Oct. 29, 1996). Past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel here finds that Complainant has rights in the STEVE MADDEN mark under [UDRP] ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of
Policy ¶ 4(a)(i).”).
Complainant next alleges that Respondent’s <stevemaddenboots.us> domain name is confusingly similar to Complainant’s STEVE MADDEN mark. The Panel notes that the disputed domain name incorporates Complainant’s STEVE MADDEN mark in its entirety, along with adding the descriptive term “boots” and the country code top level domain (“ccTLD”) “.us,” while also removing the space between words in Complainant’s mark. The Panel notes that the addition of a descriptive term does not sufficiently distinguish a disputed domain name from a trademark. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). The Panel also notes that the addition of a ccTLD does not sufficiently distinguish a disputed domain name from a trademark. See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”). The Panel further recognizes that the removal of a space in the mark has no effect on the disputed domain name’s confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms does not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds that Respondent’s <stevemaddenboots.us> domain name is confusingly similar to Complainant’s STEVE MADDEN mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
The Panel finds that Respondent did not submit any evidence to demonstrate that it owns any service marks or trademarks that reflect the <stevemaddenboots.us> domain name. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel finds that, pursuant to Policy ¶ 4(c)(i), Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant further contends that Respondent does not have any rights or legitimate interests in the <stevemaddenboots.us> domain name because Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its STEVE MADDEN mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Faich Child” as the domain name registrant. 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). Because Respondent was not authorized by Complainant to use the STEVE MADDEN 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 <stevemaddenboots.us> domain name under Policy ¶ 4(c)(iii).
Complainant additionally asserts that Respondent is using the <stevemaddenboots.us> domain name to offer Complainant’s goods for sale, and Complainant believes the goods may be counterfeit. See Complainant’s Exhibit B. The Panel notes that the exhibit depicts screen shots of the resolving website, which shows a series of photographs of models wearing shoes, and advertises shoes for sale that purport to originate from Complainant’s business. Past panels have found that selling a complainant’s goods, counterfeit or otherwise, via a disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alticor Inc. v. Lanfang Song / SONG LAN FANG, FA 1359599 (Nat. Arb. Forum Feb. 2, 2011)(finding that selling the complainant’s products through the <amway68.com> domain name was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also 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). The Panel here finds that Respondent’s use of the <stevemaddenboots.us> domain name to offer Complainant’s goods for sale does not constitutes a Policy ¶ 4(c)(ii) bona fide offering of goods or services, or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent registered and is using the <stevemaddenboots.us> domain name in bad faith. Complainant asserts that Respondent is intentionally attracting Internet users for commercial gain by creating a likelihood of confusion with Complainant’s STEVE MADDEN mark. Complainant states that Respondent is using the disputed domain name to offer Complainant’s goods for sale, and Complainant believes the goods may be counterfeit. Past panels have found that selling counterfeit goods based on a complainant’s goods via a disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent created confusion as to the complainant’s connection with the website by selling counterfeit products). The Panel here finds that Respondent’s use of the <stevemaddenboots.us> domain name to sell counterfeit goods based on Complainant’s goods constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the usTLD Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <stevemaddenboots.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 28, 2013
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