Wolverine World Wide, Inc. v. Fergus Knox
Claim Number: FA1507001627751
Complainant is Wolverine World Wide, Inc. (“Complainant”), represented by Julia K. Sutherland of Seyfarth Shaw LLP, Illinois, USA. Respondent is Fergus Knox (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <merrellaustralia.com>, registered with GoDaddy.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 7, 2015; the Forum received payment on July 14, 2015.
On July 8, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <merrellaustralia.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 July 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 2015 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@merrellaustralia.com. Also on July 15, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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. Policy ¶ 4(a)(i) - Complainant uses the MERRELL mark in conjunction with its sale of hiking and climbing boots. Complainant has rights in the MERRELL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,337,440, registered on May 21, 1958). Respondent’s <merrellaustralia.com> domain name is confusingly similar to the MERRELL mark because it entirely contains the mark, and is differentiated by only the geographic term “australia” and the generic top-level domain (“gTLD”) “.com.”
2. Policy ¶ 4(a)(ii) - Respondent is not commonly known by the <merrellaustralia.com> domain name, as it has failed to submit any evidence to suggest that it is commonly known by the name, and because Complainant has not authorized Respondent to use the MERRELL mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the resolving website to either sell counterfeit versions of Complainant’s products, or else to resell Complainant’s products without authorization to do so. In addition, Respondent uses the resolving website in an attempt to pass itself off as Complainant.
3. Policy ¶ 4(a)(iii) - Respondent registered and uses the <merrellaustralia.com> domain name in bad faith because it uses the resolving website in an attempt to pass itself off as Complainant, by either selling counterfeit versions of Complainant’s products, or else reselling Complainant’s products without authorization. This use is disruptive as well as intended to attract Internet users for commercial gain.
B. Respondent:
1. Respondent has failed to submit a formal Response.
1. Respondent’s <merrellaustralia.com> domain name is confusingly similar to Complainant’s MERRELL mark.
2. Respondent does not have any rights or legitimate interests in the <merrellaustralia.com> domain name.
3. Respondent registered or used the <merrellaustralia.com> domain name in bad faith.
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 uses the MERRELL mark in conjunction with its sale of hiking and climbing boots. Complainant alleges that it has rights in the MERRELL mark through its registration with the USPTO (Reg. No. 1,337,440, registered on May 21, 1958). Complainant has provided documentation of this registration in Exhibit 7, along with registrations of the mark in Australia in Exhibits 5 and 6. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Accordingly, the Panel finds that Complainant has rights in the MERRELL mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <merrellaustralia.com> domain name is confusingly similar to the MERRELL mark because it entirely contains the mark, and is differentiated by only the geographic term “australia” and the gTLD “.com.” Past panels have found neither of these changes sufficient to remove a domain name from the realms of confusing similarity. 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); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that Respondent’s <merrellaustralia.com> domain name is confusingly similar to Complainant’s MERRELL mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant alleges that Respondent is not commonly known by the <merrellaustralia.com> domain name. The Panel notes that the WHOIS information lists “Fergus Knox” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Additionally, Complainant urges that it has never authorized Respondent to sell products bearing the MERRELL mark. Past panels have found, in similar circumstances, that respondents are not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Accordingly, the Panel finds that Respondent is not commonly known by the <merrellaustralia.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the <merrellaustralia.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to sell products that are either counterfeit versions of those sold by Complainant, or else are legitimate products of Complainant being resold by Respondent without authorization. Complainant has provided documentation of Respondent’s use of the website, selling boots branded with the MERRELL mark, in Exhibit 10. Past panels have found either use, counterfeit sale or unauthorized resale, sufficient to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). The Panel finds either use here, and finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant also alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website in an attempt to pass itself off as Complainant. Complainant has provided documentation of this attempt at passing off as Complainant in Exhibit 10, where Complainant alleges Respondent claims to be the “Official Merrel Australia Store,” and where Respondent purportedly displays Complainant’s stylized “M Circle Design.” Past panels have found the use of a disputed domain to pass off as a complainant to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds Complainant’s evidence sufficient to show Respondent attempts to pass itself off as Complainant, and finds Respondent fails to provide bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant alleges that Respondent uses the <merrellaustralia.com> domain name for the purpose of disrupting Complainant’s business operations because it uses the resolving website to sell products that are either counterfeit versions of Complainant’s, or else, genuine versions being resold without authorization. Complainant has provided documentation of this use in Exhibit 10. Past panels have found either use to constitute disruption under Policy ¶ 4(b)(iii), thereby showing bad faith use. See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). The Panel finds either use here, and finds that Respondent uses the <merrellaustralia.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent uses the <merrellaustralia.com> domain name to attract Internet users for financial gain by using the <merrellaustralia.com> domain name in the disruptive manner described above. In addition, to this Complainant urges that Respondent uses the resolving website in an attempt to pass itself off as Complainant, by claiming to be the “Official Merrel Australia Store,” and purportedly displaying Complainant’s stylized “M Circle Design.” Complainant has provided documentation of this use in Exhibit 10. Past panels have found any of these uses, sale of counterfeit goods, unauthorized resale of goods, or attempt to pass off as a complainant, sufficient to find bad faith in use 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; see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”). The Panel finds such behavior by Respondent here, and finds that Respondent registered and uses the <merrellaustralia.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <merrellaustralia.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 19, 2015
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