OnlineShoes.com, Inc. v. Xiayu Zhi
Claim Number: FA1511001645230
Complainant is OnlineShoes.com, Inc. ("Complainant"), represented by Zachary Wright of Wright Law PLLC, Washington, USA. Respondent is Xiayu Zhi ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onlineshoes-us.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 3, 2015; the Forum received payment on November 3, 2015.
On November 3, 2015, GoDaddy.com, LLC confirmed by email to the Forum that the <onlineshoes-us.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 November 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@onlineshoes-us.com. Also on November 4, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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 November 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant is a retail seller of shoes and related products, and claims to have been the first online shoe retailer in the United States. Complainant's website has 8 million registered users, and estimates that it has served over 10 million customers in the United States. Complainant has annual revenues of approximately $180 million. Complainant has used the <onlineshoes.com> domain name and the trademarks ONLINESHOES and ONLINESHOES.COM continuously since December 1996. These marks are both registered in the United States; the registration for ONLINESHOES.COM issued in January 2006 and lists a first-use date of October 1997.
The disputed domain name <onlineshoes-us.com> was registered by Respondent in May 2015. Complainant contends that the disputed domain name is identical or confusingly similar to Complainant's marks; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant states that it has not licensed or otherwise authorized Respondent to use its marks. Complainant alleges that Respondent is attempting to pass itself off as Complainant, in that Respondent's website has an appearance very similar to Complainant's site, with approximately 85% of the HTML code having been copied therefrom. At one time Respondent's site even included information about Complainant that had been copied directly from Complainant's site. Complainant further asserts that at least some of the products offered for sale on Respondent's site appear to be counterfeit copies of brand-name shoes. Complainant also alleges that Respondent holds many other domain names that are related to well-known brand names, including nikestore-usa.com, nikefactroystoreonline.com, cocobagonline.com, and lebron12shoestore.com. Complainant cites a previous UDRP decision, Griffin
Technology, Inc. v. Xiayu Zhi, FA 1596600 (Nat. Arb. Forum Jan. 23, 2015), in which Respondent was found to have registered and used a domain name in bad faith, using it to sell counterfeit goods.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.").
The disputed domain name corresponds to Complainant's registered marks ONLINESHOES and ONLINESHOES.COM, with a hyphen and the geographic term "us" inserted and, in the case of ONLINESHOES, the ".com" top-level domain appended. These additions do not diminish the similarity between the domain name and Complainant's marks. See, e.g., Mediacom Communications Corp. v. Kathy Johnson, FA 1638597 (Forum Nov. 2, 2015) (finding <mediacom-us.com> confusingly similar to MEDIACOM); Directv, LLC v. Steve Binion, Bakers, D2015-0820 (WIPO July 2, 2015) (finding <directv-us.com> confusingly similar to DIRECTV). The Panel finds that the disputed domain name is confusingly similar to Complainant's mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name is nearly identical to Complainant's mark, and has been used for a website that seeks to pass itself off as being Complainant's site to sell what appear to be counterfeit goods. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Vertu Corp. v. Dai Yong, FA 1636556 (Forum Oct. 20, 2015); Griffin Technology, Inc. v. Xiayu Zhi, supra. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent has used the disputed domain name for a website that imitates and was largely copied from Complainant's site, offering apparently counterfeit goods for sale. Under the circumstances, the Panel infers that Respondent registered the domain name with this use in mind. See Griffin Technology, Inc. v. Xiayu Zhi, supra (finding bad faith registration and use under similar circumstances). The Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onlineshoes-us.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 1, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page