DSW Shoe Warehouse, Inc. v. Registrant(187640)
Claim Number: FA0602000643544
Complainant is DSW Shoe Warehouse, Inc. (“Complainant”), represented by Kathryn E. Smith, of Wood, Herron & Evans, LLP, 2700 Carew Tower, 441 Vine Street, Cincinnati, OH 45202. Respondent is Registrant(187640) (“Respondent”), PO Box No. 71826, KCPO, Hong Kong Hong Kong, 852.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dswwarehouse.com>, registered with Onlinenic, Inc.
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 National Arbitration Forum electronically on February 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 13, 2006.
On February 12, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <dswwarehouse.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 7, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@dswwarehouse.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 13, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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." 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 makes the following assertions:
1. Respondent’s <dswwarehouse.com> domain name is confusingly similar to Complainant’s DSW SHOE WAREHOUSE mark.
2. Respondent does not have any rights or legitimate interests in the <dswwarehouse.com> domain name.
3. Respondent registered and used the <dswwarehouse.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DSW Shoe Warehouse, Inc., owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DSW SHOE WAREHOUSE mark. Shonac Corporation first registered the DSW SHOE WAREHOUSE mark with the USPTO on May 23, 1995 (Reg. No. 1,895,449), and has since assigned its registered trademark to Complainant.
Complainant is in the retail business of selling reasonably priced shoes, apparel, and accessory items through more than one hundred stores in the United States. As part of its business, Complainant utilizes Internet websites located at the <dswshoewarehouse.com> and <dswshoe.com> domain names. Both of Complainant’s domain names resolve to the same website.
Respondent registered the <dswwarehouse.com> domain name on November 30, 2001. Respondent is using the disputed domain name to operate a website that offers several links to websites operated by third-party shoe retailers that directly compete with Complainant.
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."
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.”).
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.
Complainant has established rights to the DSW SHOE WAREHOUSE mark through its ownership of federal trademark registrations with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the
BLIZZARD mark.”); see also
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Respondent’s <dswwarehouse.com> domain name is confusingly similar to Complainant’s DSW SHOE WAREHOUSE mark under Policy ¶ 4(a)(i), because it includes the first and last terms of the mark and merely omits the term “shoe” from the mark. In Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000), the respondent registered the <asprey.com> domain name and the panel concluded that the domain name was not only identical to the complainant’s ASPREY mark, but also confusingly similar to its MISS ASPREY and ASPREY & GARRARD marks. Therefore, Respondent’s mere omission of the term “shoe” from Complainant’s DSW SHOE WAREHOUSE mark in the <dswwarehouse.com> domain name renders the domain name confusingly similar to the mark. See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the <dswwarehouse.com> domain name. Complainant must initially establish a prima
facie case in support of its allegations.
However, once Complainant has made a prima facie case, the burden
then shifts to Respondent to demonstrate that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or
legitimate interests in respect of the Domain Name requires the Complainant to
prove a negative. For the purposes of this sub paragraph, however, it is
sufficient for the Complainant to show a prima facie case and the burden of proof
is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to
seek to bring themselves within one of the examples of paragraph 4(c) or put
forward some other reason why they can fairly be said to have a relevant right
or legitimate interests in respect of the domain name in question.”); see
also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist). The
Panel finds that Complainant has established a prima facie case and will
accordingly evaluate the evidence to determine whether Respondent has rights or
legitimate interests in the domain name under Policy ¶ 4(c).
Complainant has asserted that Respondent is not commonly
known by the <dswwarehouse.com> domain name. In light of Respondent’s failure to respond,
there is no evidence in the record suggesting that Respondent is commonly known
by the disputed domain name. Thus, Respondent
has not established rights or legitimate interests in the <dswwarehouse.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Additionally, Respondent’s <dswwarehouse.com> domain name, which includes parts of Complainant’s DSW SHOE WAREHOUSE mark, resolves to a website that provides links to businesses in direct competition with Complainant. Respondent is offering links to providers of similar retail shoe products to those Complainant offers, and Respondent likely receives referral fees for diverting Internet users to the websites of Complainant’s competitors. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel found that the respondent’s diversionary use of complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Therefore, Respondent is misleading consumers seeking Complainant’s shoe products to its own directory website for commercial gain, which does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Royal Bank of Scotland Group plc v. PARRY, FA 615243 (Nat. Arb. Forum Feb. 10, 2006) (finding that respondent’s use of complainant’s mark to operate a commercial website that “displays links to various third-party websites, including several that compete with complainant” does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <dswwarehouse.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is diverting Internet users to a website providing several links to third-party businesses in direct competition with Complainant. Respondent’s website offers links to third-party shoe retailers that provide the same or similar shoe products that Complainant offers at its <dswshoewarehouse.com> and
<dswshoe.com> domain names. Therefore, Respondent is taking advantage of the confusing similarity between Respondent’s domain name and Complainant’s DSW SHOE WAREHOUSE mark and capitalizing on the goodwill associated with the mark for its own commercial gain. Therefore, Respondent’s registration of the domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dswwarehouse.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 27, 2006
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