Mycoskie, LLC v. Sweet
Claim Number: FA1301001479490
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is Sweet (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tomsoutletonline2013.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2013; the National Arbitration Forum received payment on January 14, 2013.
On January 11, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail message addressed to the National Arbitration Forum that the <tomsoutletonline2013.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 January 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tomsoutletonline2013.com. Also on January 15, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" 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 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
Since 2006, Complainant has marketed men’s, women’s and children’s shoes under the TOMS trademark.
Complainant holds registrations, on file with the United States Patent and Trademark Office (“USPTO”) for the TOMS trademark (including Reg. No. 3,662,112, registered July 28, 2009).
Respondent registered the <tomsoutletonline2013.com> domain name on December 10, 2012.
Respondent’s <tomsoutletonline2013.com> domain name is confusingly similar to Complainant’s TOMS mark.
Respondent has not been commonly known by the <tomsoutletonline2013.com> domain name.
Respondent has no rights in the TOMS trademark and has appropriated the mark in creating the contested domain name.
Respondent uses the <tomsoutletonline2013.com> domain name to resolve to a website that sells shoes which directly compete with those sold by Complainant, and appear to be counterfeit versions of Complainant’s TOMS-branded shoes.
Respondent has neither any rights to nor any legitimate interests in the contested domain name.
Respondent may use the disputed domain to operate a phishing scheme from its resolving website.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent’s registration and use of the domain name evidences bad faith in attracting Internet traffic to Respondent’s website by creating confusion among Internet users.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the TOMS trademark under Policy ¶ 4(a)(i) on the strength of its registration of the mark with a national trademark authority, the USPTO. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007):
Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark derive from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a UDRP respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Turning then to the central question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <tomsoutletonline2013.com> domain name is confusingly similar to Complainant’s TOMS trademark. The do-main name contains the entire mark, adding only the generic top-level domain (“gTLD”) “.com” and the generic descriptors “outlet,” “online,” and “2013,” which are incapable of distinguishing the domain name from the mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a UDRP complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
See also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name, and that Respondent has no rights in the TOMS trademark and has appropriated the mark in creating the contested domain name. Moreover, the WHOIS information for the contested domain name identifies the registrant only as “Sweet,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <tomsoutletonline2013.com> domain name so as to have acquired or demonstrated rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii). See Coppertown DriveThru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the disputed domain name <coppertown.com>, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <tomsoutletonline2013.com> domain name to resolve to a website that sells shoes which directly compete with those sold by Complainant, and that appear to be counterfeit versions of Complainant’s TOMS-branded shoes. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using disputed domain names for either a bona fide offering of goods or services or a legitimate noncommercial or fair use where that respondent used the domain names to divert Internet users to a website that offered services in competition with those offered by a UDRP complainant under its marks).
Finally we take notice of Complainant’s allegation, which again Respondent does not deny, that Respondent appears to be using the <tomsoutletonline2013.com> domain name in connection with a phishing scheme, whereby Respondent seeks to employ the domain name to appropriate consumers’ credit card numbers. This is further evidence that Respondent lacks rights to and legitimate interests in the domain within the contemplation of Policy ¶ 4(a)(ii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a scheme to deceive Internet users into providing their credit card numbers and other personal information is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent has registered and is using the contested <tomsoutletonline2013.com> domain name, which is confusingly similar to Complainant’s TOMS trademark, to disrupt Complainant’s business, including by selling counterfeit versions of Complainant’s products. This stands as evidence that Respondent registration and use of the domain name is in bad faith as described in Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that a UDRP complainant’s business is disrupted in bad faith by a respondent’s registration and use of a disputed domain name for the purpose of selling counterfeit products).
We are similarly convinced that Respondent’s registration and use of the contested domain name evidences an attempt, for commercial gain, to create confusion among Internet users by association with Complainant’s TOMS trademark. This is proof of bad faith registration and use of the domain name within the meaning of Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that a respondent’s attempt to gain commercially by creating confusion among Internet users as to the possibility of a UDRP complainant’s connection with a website resolving from a disputed domain name by employing that website to sell counterfeit goods).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <tomsoutletonline2013.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 21, 2013
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