ECCO SKO A/S v. Oleg Shilo
Claim Number: FA1704001727024
Complainant is ECCO SKO A/S (“Complainant”), represented by Natalia Pakhomovska of DLA Piper Ukraine LLC, Ukraine. Respondent is Oleg Shilo (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eccoukraine.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2017; the Forum received payment on April 14, 2017.
On April 15, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <eccoukraine.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2017 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@eccoukraine.com. Also on April 18, 2017, 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.
A timely Response was received and found compliant on May 12, 2017.
On May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, ECCO SKO A/S, is a footwear manufacturer and seller based in Denmark. In connection with this business, Complainant uses the ECCO mark to promote its goods and services. Complainant has rights in the mark through its registration with the World Intellectual Property Organization (“WIPO”) (Reg. No. 820178, registered Dec. 23, 2003). See Compl., at Attached Annex 2. Respondent’s domain name, <eccoukraine.com>, is confusingly similar to Complainant’s ECCO mark as it contains the mark in its entirety and appends the geographic term “Ukraine" as well as the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by <eccoukraine.com>, nor has Complainant authorized Respondent to register a domain name containing Complainant’s mark. Respondent has failed to use <eccoukraine.com> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use; instead, the domain name resolves to a page that attempts to intentionally attract Internet users for Respondent’s commercial gain through Respondent’s passing off behavior.
Respondent registered and used the domain name in bad faith. Respondent intentionally attracts Internet users looking for Complainant to Respondent’s website for Respondent’s commercial gain. Respondent attempts to pass off as Complainant—further evidence of bad faith per the non-exclusive nature of Policy ¶ 4(a)(iii).
B. Respondent
Respondent has rights and legitimate interests in <eccoukraine.com> as it only offers original products of ECCO Company which is officially supplied to Ukraine. Respondent has 500 visitors to its website every day, and Respondent is indeed commonly known by the domain name as it conducts business through the domain name which comports with the actual terms of the domain name; selling “ECCO” products in the “Ukraine.” Respondent suspects that Complainant intends to profit from the goodwill built in the domain name by Respondent.
Complainant asserts rights in the ECCO mark through its registration with WIPO (Reg. No. 820178, Dec. 23, 2003). That registration, under WIPO’s Madrid System of trademark registration covers Ukraine. Respondent’s disputed domain name <eccoukraine.com> contains Complainant’s mark in its entirety and appends the geographic name “Ukraine” to it as well as the gTLD “.com.”
Respondent is not commonly known by <eccoukraine> and has not been authorized by Complainant to use Complainant’s mark in its domain name registration.
Respondent uses the domain name to attract Internet users to its website where it offers sale of Complainant’s products and those of competitors of Complainant. Respondent registered and uses the domain name to attract buyers for those products for its own commercial gain, taking advantage of its unauthorized use of Complainant’s mark in doing so.
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.
Registration by Complainant of its ECCO mark under WIPO’s Madrid system of trademark registration gives Complainant rights in the mark within the meaning of Policy ¶4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). Respondent’s addition of the geographical term “Ukraine” and the gTLD “.com” do not affect the confusing similarity of Respondent’s domain name. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016).
Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
Because Complainant has trademark rights in its mark and Respondent is not commonly known by the ECCO mark, Complainant has demonstrated a prima facie case that Respondent lacks rights and legitimate interests in its use, and the burden shifts to Respondent to show he does have rights and legitimate interests in the mark. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Respondent’s WHOSIS information identifies Respondent as “Oleg Shilo” and thus establishes Respondent is not commonly known by the ECCO mark. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015). Moreover, no evidence exists that Complainant authorized Respondent to use the mark. Respondent has not met his burden to prove he has rights and legitimate interests in the mark. In addition, Respondent’s use of the mark for commercial gain to take advantage of the confusing similarity of the mark and disputed domain name is not a legitimate and fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006).
Complainant has established that Respondent lacks rights and legitimate interests in its use under Policy ¶4(c)(ii) and (III).
Respondent’s illegitimate registration and use of Complainant’s mark for commercial gain by diverting Internet users to his website constitutes bad faith registration and use pursuant to Policy ¶4(b)(ii). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003).
Complainant has established that Respondent registered and uses the disputed domain name in bad faith within the meaning of Policy ¶4(b)(iv).
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eccoukraine.com> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: June 13, 2017
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