Eagle Creek, Inc. v. yesolsports
Claim Number: FA1411001588094
Complainant is Eagle Creek, Inc. (“Complainant”), represented by Stephen F. Shaw of Womble Carlyle Sandridge & Rice, LLP, North Carolina, USA. Respondent is yesolsports (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eaglecreekkorea.com>, registered with Inames 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2014; the National Arbitration Forum received payment on November 3, 2014.
On November 3, 2014, Inames Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <eaglecreekkorea.com> domain name is registered with Inames Co., Ltd. and that Respondent is the current registrant of the name. Inames Co., Ltd. has verified that Respondent is bound by the Inames 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 November 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2014 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@eaglecreekkorea.com. Also on November 6, 2014, 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 December 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant uses EAGLE CREEK to sell apparel and fashion accessories. The EAGLE CREEK mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,831,343, registered April 19, 1994). The <eaglecreekkorea.com> domain name takes the entire mark and adds the geographic term “korea” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <eaglecreekkorea.com> domain name. Respondent has never been commonly known by this domain name. Respondent is using the <eaglecreekkorea.com> domain name for a non-public website that features parked content such as hyperlink advertising. See Compl., at Attached Ex. 8.
Respondent registered and is using the <eaglecreekkorea.com> domain name in bad faith. Respondent is capitalizing on likelihood that Internet users will be confused as to Respondent’s association with Complainant, or vice versa. Further, Respondent has actual knowledge of the EAGLE CREEK mark when registering and using the <eaglecreekkorea.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the apparel and fashion accessories industry and uses the EAGLE CREEK mark in its business of selling those products.
2. The EAGLE CREEK mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,831,343, registered April 19, 1994).
3. The <eaglecreekkorea.com> domain name was registered January 14, 2011.
4. Respondent uses the <eaglecreekkorea.com> domain name for a non-public website that features parked content such as hyperlink advertising.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the EAGLE CREEK mark to sell apparel and fashion accessories. The EAGLE CREEK mark is registered with the USPTO (e.g., Reg. No. 1,831,343, registered April 19, 1994). The Panel agrees that the EAGLE CREEK mark’s registration is sufficient evidence of Policy ¶ 4(a)(i) rights in the mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EAGLE CREEK mark. Complainant also argues that the <eaglecreekkorea.com> domain name takes the entire mark and adds the geographic term “korea” and the gTLD “.com.” The Panel agrees that neither the removal of the mark’s spacing nor the addition of the gTLD add any distinction to the domain name. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). The Panel agrees that adding the term “korea” to the mark enhances the confusing similarity of the domain name in that Internet users will identify the domain name as being the mark’s related business in the region of Korea. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Thus, the Panel concludes that Policy ¶ 4(a)(i) confusing similarity is apparent in the disputed domain name.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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 Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s EAGLE CREEK mark and to use it in its domain name and has simply added the geographic word “korea” which suggests that the domain name is an official domain name of Complainant referring to the business of Complainant in the region of Korea;
(b) Respondent has been using the domain name for a non-public website that features parked content such as hyperlink advertising of goods similar to those sold by Complainant;
(c) Respondent has been engaging in these activities without the knowledge or approval of Complainant;
(d) Complainant argues that Respondent has never been commonly known by this domain name. The Panel notes that the only identifying information related to Respondent, the domain name’s WHOIS record, indicates that one “yesolsports” is the registrant. This Panel agrees that there is no basis for finding Respondent to be commonly known by the domain name under Policy ¶ 4(c)(ii) and there is no evidence to that effect. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name);
(e) Complainant further argues that Respondent is using the <eaglecreekkorea.com> domain name for a non-public website that features parked content such as hyperlink advertising. See Compl., at Attached Ex. 7–8. The Panel notes the domain name resolves to either an “error” page, or more prominently to a website offering off “Packing Solutions” and “Bags&Luggage.” See id. This Panel concludes that none of the offers or content shown on the disputed domain name’s website gives rise to a Policy ¶ 4(c)(i) bona fide offering of goods or services, because is targeting the same types of products in which Complainant deals, such as apparel and fashion accessories. See, e.g., Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is capitalizing on a likelihood that Internet users will be confused as to Respondent’s association with Complainant, or vice versa. This Panel agrees that the use as shown in Exhibit 7 shows a website that targets the types of goods Complainant sells, and as such Respondent’s use of the domain name is tantamount to Policy ¶ 4(b)(iv) bad faith. See, e.g., Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Secondly, Complainant argues that Respondent had actual knowledge of the EAGLE CREEK mark when registering and using the <eaglecreekkorea.com> domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that 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”).
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and retention of the disputed
<eaglecreekkorea.com> domain name using the EAGLE CREEK mark, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eaglecreekkorea.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 9, 2014
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