Mason Companies, Inc. v. Chris Byno
Claim Number: FA1310001527163
Complainant is Mason Companies, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Chris Byno (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shoesmallsell.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2013; the National Arbitration Forum received payment on October 29, 2013.
On October 31, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <shoesmallsell.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the names. 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 October 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@shoesmallsell.com. Also on October 31, 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 November 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant provides retails services in connection with footwear and clothing items. Complainant has used the SHOE MALL mark since at least 1997and has invested substantial time and money in creating a cutting-edge mail order and online distribution infrastructure for its <shoemall.com> domain name.
Complainant has rights in the SHOE MALL mark, used in connection with footwear and clothing retail services. Complainant is the owner of registrations for the SHOE MALL mark with the United States Patent and Trademark Office (“USPTO”) and holds related registrations based on SHOE MALL including SHOEMALL and SHOEMALL.COM.
Respondent’s <shoesmallsell.com> domain name is confusingly similar to Complainant’s SHOE MALL mark. The disputed domain name incorporates Complainant’s mark it its entirety while adding the letter “s” to the word “shoe” and the generic term “sell.”
Respondent does not have any rights or legitimate interests in the <shoesmallsell.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use its SHOE MALL mark in any way. The <shoesmallsell.com> domain name resolves to a website that sells shoes, books, and other products, thereby competing with Complainant. Respondent’s use of the domain name has resulted in numerous consumer complaints and reports based upon Respondent’s decision to take the consumers’ money and provide nothing in return.
Respondent registered and is using the <shoesmallsell.com> domain name in bad faith. The disputed domain name resolves to a website offering products that compete with Complainant and thus disrupts Complainant’s business. Respondent is using a confusingly similar domain name to attract Internet users to its commercial website for Respondent’s own commercial gain. The resolving website offers products that compete directly with Complainant.
Respondent had knowledge of Complainant’s SHOE MALL mark prior to registering the <shoesmallsell.com> domain name because there is an obvious connection between the disputed domain name and Complainant’s SHOE MALL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns numerous trademark registrations with the USPTO and with International registrars for its SHOE MALL mark.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the SHOE MALL mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent is using the at-issue domain name to address a website that sells shoes, books, and other products, thereby competing with Complainant. Respondent’s use of the domain name has resulted in numerous consumer complaints and reports based upon Respondent’s decision to take the consumers’ money and provide nothing in return.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
The Panel primarily considers Complainant’s SHOE MALL mark notwithstanding that it might have alternatively considered any, or all, of Complainant’s related SHOE MALL trademarks for the purpose of Policy ¶4(a)(i) analysis. Complainant demonstrates its rights in the SHOE MALL mark under Policy ¶ 4(a)(i) by showing it registered such mark with the USPTO. 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).”).
The at-issue domain is made up of Complainant’s SHOE MALL trademark without the space, adds an “s” and the generic terms “sell,” then appends the top-level domain name “.com” thereto. The resulting differences between the domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶4(a)(i). In fact, the addition of “sell” in the domain name only serves to increase confusion between the domain name and the mark since the term suggests Complainant’s business of selling shoes. Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s SHOE MALL trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), (holding that the addition of descriptive or generic terms did not remove a disputed domain name from the realm of confusing similarity); See also. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), (finding that spaces and gTLDs are irrelevant to a Policy ¶ 4(a)(i) analysis.
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the registrant of the <shoesmallsell.com> domain name as “Chris Byno.” Additionally, there is no evidence that tends to prove that despite the WHOIS information Respondent is otherwise commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <shoesmallsell.com> domain name for the purposes of 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The <shoesmallsell.com> domain name addresses a website that sells shoes, books, and other products that compete with those offered by Complainant. Offering competing goods or services via a domain name that is confusingly similar to Complaint’s trademark is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Additionally, Respondent’s use of the domain name has resulted in numerous consumer complaints and negative reports based upon Respondent’s taking consumers’ money and provide nothing in return. Clearly, Respondent’s uses the domain name to facilitate what appears to be a phishing scheme is antithetical to any Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) related support of Respondent having rights or interests in the domain name. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining phishing as a practice “involv[ing] the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances as well other circumstances are present from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent’s <shoesmallsell.com> website offers products that compete with Complainant, thereby disrupting Complainant’s business. Likewise disruptive is the fact that Respondent uses the domain name to defraud visitors to the <shoesmallsell.com> website. Notably, some defrauded visitors who mistakenly believed Complainant sponsored Respondent’s <shoesmallsell.com> website have register complaints against Complainant. Using the at-issue domain name in this manner demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Additionally as noted above, Respondent uses the confusingly similar domain name to attract Internet users to the <shoesmallsell.com> website for Respondent’s commercial gain. Respondent’s offering of competing products via the at-issue domain name demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). Also as noted above, Respondent is involved in a phishing scheme which in itself indicates Respondent’s bad faith registration and use of the domain name. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Finally, Respondent had knowledge of Complainant’s SHOE MALL trademark prior to registering the <shoesmallsell.com> domain name. Respondent’s actual knowledge of Complainant’s SHOE MALL mark is inferred from the notoriety of such mark and from Respondent’s use of the domain name to exploit Complainant’s mark by using a domain name incorporating such mark to address a website offering competing products for sale. Respondent’s prior knowledge of the SHOE MALL marks shows that Respondent registered the at-issue domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shoesmallsell.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 27, 2013
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