Allen Edmonds, LLC a/k/a Allen Edmonds Corporation v. Aitken Iain
Claim Number: FA1905001841363
Complainant is Allen Edmonds, LLC a/k/a Allen Edmonds Corporation (“Complainant”), represented by Caroline Chicoine of HUSCH BLACKWELL LLP, Missouri, USA. Respondent is Aitken Iain (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <allenedmondsstore.online> and <allenemall.online>, registered with GoDaddy.com, LLC.
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 Forum electronically on May 1, 2019; the Forum received payment on May 1, 2019.
On May 1, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <allenedmondsstore.online> and <allenemall.online> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2019 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@allenedmondsstore.online, postmaster@allenemall.online. Also on May 2, 2019, 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 May 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant makes and markets premium men’s footwear and accessories.
Complainant holds a registration for the ALLEN EDMONDS trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,203,180, registered September 4, 2012.
Respondent registered the domain names <allenedmondsstore.online> and <allenemall.online> on April 18, 2019, and April 19, 2019, respectively.
Each of the domain names is confusingly similar to Complainant’s ALLEN EDMONDS mark.
Respondent is not licensed or otherwise authorized to use Complainant’s ALLEN EDMONDS mark.
Respondent has not been commonly known by either of the domain names.
Respondent has used the domain names to profit from the sale of counterfeit versions of Complainant’s products online.
Respondent has since removed from the website resolving from the domain names the content employed to sell counterfeit goods and has thus converted the domain names to inactive holdings.
Respondent lacks rights to and legitimate interests in the domain names.
Respondent registered the domain names using a privacy shield to hide its true identity.
Respondent knew of Complainant and its rights in the ALLEN EDMONDS mark prior to registering the domain names.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) Each of the domain names registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names were registered and are 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the ALLEN EDMONDS trademark and service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark]… demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <allenedmondsstore.online> is confusingly similar to Complainant’s ALLEN EDMONDS trademark and service mark. The domain name incorporates the mark in its entirety, with only the elimination of the space between its terms and the addition of the generic term “store,” which describes an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.online.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum April 30, 2007), finding that neither the elimination of the spaces between the terms of the mark of another nor the addition to it of a gTLD in creating a domain name establishes distinctiveness from a UDRP complainant’s mark under Policy ¶ 4(a)(i).
See also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018):
[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).
For the essential reasons just indicated, we reach the same conclusion as to Respondent’s <allenemall.online> domain name, the only substantial difference between the two domain names being inclusion in this one of the word “mall” and the “ALLEN E” portion of Complainant’s ALLEN EDMONDS mark. As to the latter item, see Huron Consulting Group Inc. v. David White, FA 1701395 (Forum December 6, 2016) (finding that a respondent’s <huroninc.net> domain name was confusingly similar to both the HURON CONSULTING GROUP and the HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because the domain name contained the dominant portion of the marks). Respondent has in fact supplied the best evidence of the confusing similarity of this domain name to Complainant’s marks by using it to sell counterfeit versions of Complainant’s goods, thus illustrating Respondent’s confidence that the domain name would succeed in confusing Internet users searching online for Complainant’s official website.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged <allenedmondsstore.online> and <allenemall.online> domain names, 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 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or 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 (Forum September 25, 2006):
Complainant must … 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, … 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. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by either of the domain names <allenedmondsstore.online> or <allenemall.online> , and that Complainant has not licensed or otherwise authorized Respondent to use the ALLEN EDMONDS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Aitken lain,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by either of the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without any objection from Respondent, that Respondent has used the <allenedmondsstore.online> and <allenemall.online> domain names to sell counterfeit versions of Complainant’s products online. This employment is neither a bona fide offering of goods and services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in them as provided in those subsections of the Policy. See Gumwand Inc. v. jared brading, FA 1794058 (Forum August 6, 2018) (finding that a respondent’s use of a domain name that was confusingly similar to the mark of a UDRP complainant to resolve to a website that sold counterfeit versions of that complainant’s chewing gum-removal equipment was 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)).
As to the present condition of the <allenedmondsstore.online> and <allenemall.online> domain names, Complainant alleges that they are entirely inactive. Nevertheless, inactive use of a domain name is a form of use. In addition, Respondent’s inactive use of the domain names in the circumstances described in the Complaint is adequate to permit us to conclude, as we do, that Respondent has both registered and uses the domain names in bad faith within the contemplation of Policy ¶ 4(a)(iii). See, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). Moreover, as has aptly been said, “it is not possible to conceive of any … plausible active use of the domain name by … Respondent that would not be illegitimate….” Telstra, supra. Further to the point, see VideoLink, Inc. v. Xantech Corporation, FA1608735 (Forum May 12, 2015):
Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
For the reasons just enumerated, we are likewise compelled to conclude that Respondent registered and has used the <allenemall.online> and <allenedmondsstore.online> domain names in bad faith as described in Policy ¶ 4(b)(iii) and (iv). On the point, see Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum December 22, 2017) (finding that a disputed domain name was registered and used in bad faith within the meaning of Policy ¶ 4(b)(iii) and (iv) where a respondent used the domain name to profit by selling knockoffs of a UDRP complainant’s products online).
It is also plain from the record that Respondent knew of Complainant and its rights in the ALLEN EDMONDS mark when it registered the contested <allenedmondsstore.online> and <allenemall.online> domain names. This further demonstrates that Respondent registered the domain names in bad faith. See, for example, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018):
Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).
The Panel thus 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 domain names <allenemall.online> and <allenedmondsstore.online> be TRANSFERRED without delay from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 31, 2019
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