Mycoskie, LLC v. cai yuzhi
Claim Number: FA1305001501430
Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA. Respondent is cai yuzhi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cheaptomsoutletshoesale.com>, <tomsonlinestore2013.com>, and <officialtomsshoescenter.com>, registered with SHANGHAI MEICHENG TECHNOLOGY INFORMATION DEVELOPMENT CO., LTD.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2013; the National Arbitration Forum received payment on May 29, 2013. The Complaint was submitted in both English and Chinese.
On May 31, 2013, SHANGHAI MEICHENG TECHNOLOGY INFORMATION DEVELOPMENT CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <cheaptomsoutletshoesale.com>, <tomsonlinestore2013.com>, and <officialtomsshoescenter.com> domain names are registered with SHANGHAI MEICHENG TECHNOLOGY INFORMATION DEVELOPMENT CO., LTD. and that Respondent is the current registrant of the names. SHANGHAI MEICHENG TECHNOLOGY INFORMATION DEVELOPMENT CO., LTD. has verified that Respondent is bound by the SHANGHAI MEICHENG TECHNOLOGY INFORMATION DEVELOPMENT CO., LTD. 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 June 4, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 24, 2013 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@cheaptomsoutletshoesale.com, postmaster@tomsonlinestore2013.com, and postmaster@officialtomsshoescenter.com. Also on June 4, 2013, the Chinese language 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 June 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cheaptomsoutletshoesale.com>, <tomsonlinestore2013.com>, and <officialtomsshoescenter.com> domain names are confusingly similar to Complainant’s TOMS mark.
2. Respondent does not have any rights or legitimate interests in the <cheaptomsoutletshoesale.com>, <tomsonlinestore2013.com>, and <officialtomsshoescenter.com> domain names.
3. Respondent registered and used the <cheaptomsoutletshoesale.com>, <tomsonlinestore2013.com>, and <officialtomsshoescenter.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the TOMS trademark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,353,902 registered on December 11, 2007). Complainant also owns marks that incorporate TOMS, such as the TOMS SHOES FOR TOMORROW trademark, which is registered through the USPTO (Reg. No. 3,327,341 registered on October 30, 2007). Complainant uses the TOMS and related marks in connection with the sale of shoes and conducts business at <www.tomsshoes.com> and <www.toms.com>.
Respondent registered the <cheaptomsoutletshoesale.com>, <tomsonlinestore2013.com>, and <officialtomsshoescenter.com> domain names on March 13, 2013, and uses them to sell counterfeit goods of Complainant’s, and to steal and use consumers’ credit card numbers.
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.”).
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings will be conducted in English.
The Panel finds that Complainant’s USPTO trademark registrations establishes Complainant’s right in the TOMS mark under Policy ¶ 4(a)(i), despite the fact that Respondent resides outside the United States. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 2007)(finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <cheaptomsoutletshoesale.com>, <tomsonlinestore2013.com>, and <officialtomsshoescenter.com> domain names are comprised of Complainant’s mark with the addition of descriptive terms such as “cheap,” “outlet,” “sale,” “online,” “store,” “2013,” “official,” “center,” “shoe” and “shoes.” The Panel finds that adding descriptive words, some of which directly pertain to Complainant’s business, along with the generic top-level domain “.com,” to Complainant’s mark, does not sufficiently differentiate the disputed domains under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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 argues that Respondent is not commonly known by the <cheaptomsoutletshoesale.com>, <tomsonlinestore2013.com>, and <officialtomsshoescenter.com> domain names. Complainant asserts that Respondent is not currently known by and has never used and/or traded under the name “TOMS” or any variety of the “TOMSSHOES” names. As nothing in the record shows that Respondent was commonly known by the domain names, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends Respondent does not use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the resolving pages as a counterfeit and a phishing site to sell goods represented as Complainant’s, and to steal and use consumers’ credit card numbers. The Panel agrees and finds that this does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the disputed domain names disrupts Complainant’s business, as Respondent is intentionally creating confusion with Complainant’s mark to divert users to Respondent’s site. Respondent uses the resolving sites to sell counterfeit goods represented as Complainant’s. The Panel finds Respondent’s counterfeiting as evidence of Respondent’s bad faith use and registration under Policy ¶ 4(b)(iii). See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Respondent creates confusion with Complainant’s mark in order to attract Internet users for commercial gain. Complainant alleges that, in addition to selling counterfeit goods, Respondent uses the resolving websites to conduct a phishing scheme by improperly taking and using consumers’ credit card numbers. The Panel finds that Respondent’s use of the disputed domain names for commercial gain is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant argues that Respondent’s bad faith is further evidenced by the fact Respondent is offering and advertising the goods of Complainant, which shows that Respondent knew of Complainants rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s marks, further evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Respondent is using the disputed domain names to obtain personal information such as consumers’ credit card numbers, known as phishing. The Panel finds that phishing is itself bad faith under Policy ¶ 4(a)(iii). Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
The Panel finds that Complainant has satisfied 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 <cheaptomsoutletshoesale.com>, <tomsonlinestore2013.com>, and <officialtomsshoescenter.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 5, 2013
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