ACX LLC D/B/A STRAYE Footwear v. Domain Admin
Claim Number: FA1811001818205
Complainant is ACX LLC D/B/A STRAYE Footwear (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Domain Admin (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <straye.com>, registered with TurnCommerce, Inc. DBA NameBright.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 27, 2018; the Forum received payment on November 27, 2018.
On November 28, 2018, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <straye.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.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 December 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 2018 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@straye.com. Also on December 3, 2018, 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 December 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, ACX LLC D/B/A STRAYE Footwear, is a footwear and apparel company based in Los Angeles, California. Complainant asserts rights in the STRAYE mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,978,181, registered June 14, 2016) See Compl. Annexes C-D. Respondent’s <straye.com> domain name is confusingly similar to Complainant’s STRAYE mark, as the domain name wholly incorporates the entire mark and adds generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the <straye.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STRAYE mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a parked webpage that hosts third-party links that compete with Complainant’s business.
iii) Respondent registered and is using the <straye.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where Respondent features pay-per-click links. Finally, Respondent had actual knowledge of Complainant’s rights in the STRAYE mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on September 3, 2009 and was transferred to third parties several times and most recently transferred to Respondent on August 19, 2018.
2. Complainant has established rights in the STRAYE mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,978,181, registered on June 14, 2016).
3. The disputed domain name resolves to a website hosting links to third-party sites that directly compete with and disrupt Complainant’s business.
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(f), 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 (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 claims rights in the STRAYE mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,978,181, registered June 14, 2016). See Amend. Compl. Annexes C-D. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel therefore holds that Complainant’s registration of the STRAYE mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <straye.com> domain name is confusingly similar to the STRAYE mark, as the domain name wholly incorporates the mark and adds generic top-level domain (“gTLD”) “.com.” The Panel notes that the disputed domain name is identical to Complainant’s mark with the addition of a gTLD. Addition of a gTLD is insufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Therefore, the Panel agrees that the disputed domain name is confusingly similar to Complainant’s STRAYE mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the <straye.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STRAYE mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies the owner of the disputed domain name as “Domain Admin” and no information on record indicating Respondent was authorized to register a domain name with Complainant’s mark. See Amend. Compl. Annex J. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <straye.com> domain name.
Complainant further argues Respondent’s lack of rights and legitimate interests in the <straye.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the name resolves to a website which resolves to a parked website hosting pay-per-click links to third-party sites that directly compete with Complainant. Use of a domain name to host a page for third-party links is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations action gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the parked web page to which the disputed domain name resolves. See Amend. Compl. Annex J.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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.
The Panel notes that the disputed domain name was created on September 3, 2009 which predates Complainant’s first claimed rights in the STRAYE mark. The Panel also notes that the disputed domain name was transferred to third parties several times and most recently transferred to Respondent on August 19, 2018 which postdates Complainant’s first claimed rights in the STRAYE mark. The Panel considers the date on which the current registrant acquired the domain name in assessing bad faith. See Paragraph 3.9 of "WIPO Jurisprudential Overview 3.0" (the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith.).
Complainant argues that Respondent’s bad faith is indicated by its use of the <straye.com> name to host a parked web page with links to third-party sites that directly compete with and disrupt Complainant’s business. Use of a domain to host pay-per-click links that compete with a complainant’s business can be evidence of bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum Jan. 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant has provided screenshots of the web page to which the disputed domain name resolves. See Compl. Annex J. The Panel finds that that Respondent is using the <straye.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the STRAYE mark. A respondent’s actual knowledge of a complainant’s rights in a mark is evidence of bad faith under Policy ¶ 4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). The Panel recalls that Complainant provides a screenshot of the web page to which the disputed domain name resolves. See Compl. Annex J. Further, Complainant argues Respondent knew of Complainant’s rights in the mark by providing a list of other domain names Respondent purportedly owns, all of which are also in the shoe industry. See Amend. Compl. Annex L. The Panel infers, due to the manner of use of the disputed domain name and notoriety of Complainant's mark that Respondent had actual knowledge of Complainant’s rights in the STRAYE mark at the time Respondent acquired the disputed domain name, and thus acted in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <straye.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 31, 2018
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