OOFOS, INC. v. Client Care / Web Commerce Communications Limited / Domain Admin / Whoisprotection.cc
Claim Number: FA2205001996766
Complainant is OOFOS, INC. (“Complainant”), represented by Corsearch, Inc., Texas, USA. Respondent is Client Care / Web Commerce Communications Limited / Domain Admin / Whoisprotection.cc (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oofosaanbieding.com>, <oofosargentina.com>, <oofos-australia.com>, <oofoscanada.com>, <oofos-canada.com>, <oofoscanadasales.com>, <oofoschile.com>, <oofoscolombia.com>, <oofosdamark.com>, <oofos-espana.com>, <oofosfootwearireland.com>, <oofosfootwearnz.com>, <oofosfootwearusa.com>, <oofosfrance.com>, <oofosireland.com>, <oofosmalaysia.com>, <oofosmalaysiashop.com>, <oofos-norge.com>, <oofosoutletmexico.com>, <oofosoutletnorge.com>, <oofosoutletsingapore.com>, <oofosphilippines.com>, <oofossaleaustralia.com>, <oofossaleireland.com>, <oofossandalerrea.com>, <oofos-sandals.com>, <oofossandalscanada.com>, <oofossandalsnz.com>, <oofossandalssale.com>, <oofossandalssg.com>, <oofosschoenen.com>, <oofosschweiz.com>, <oofossg.com>, <oofosshoesaustralia.com>, <oofosshoescanada.com>, <oofosshoesireland.com>, <oofosshoesnearme.com>, <oofosshoesuk.com>, <oofosshoesusa.com>, <oofos-singapore.com>, <oofosskorsverige.com>, <oofossouthafrica.com>, <oofosuk.com>, <oofosuksale.com>, <oofosusasale.com>, <oofosza.com>, <sandaliasoofosoutlet.com> and <theoofosmall.com>, all registered with Alibaba.Com Singapore E-Commerce Private Limited.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2022; the Forum received payment on May 17, 2022.
On May 20, 2022, Alibaba.Com Singapore E-Commerce Private Limited confirmed by e-mail to the Forum that the <oofosaanbieding.com>, <oofosargentina.com>, <oofos-australia.com>, <oofoscanada.com>, <oofos-canada.com>, <oofoscanadasales.com>, <oofoschile.com>, <oofoscolombia.com>, <oofosdamark.com>, <oofos-espana.com>, <oofosfootwearireland.com>, <oofosfootwearnz.com>, <oofosfootwearusa.com>, <oofosfrance.com>, <oofosireland.com>, <oofosmalaysia.com>, <oofosmalaysiashop.com>, <oofos-norge.com>, <oofosoutletmexico.com>, <oofosoutletnorge.com>, <oofosoutletsingapore.com>, <oofosphilippines.com>, <oofossaleaustralia.com>, <oofossaleireland.com>, <oofossandalerrea.com>, <oofos-sandals.com>, <oofossandalscanada.com>, <oofossandalsnz.com>, <oofossandalssale.com>, <oofossandalssg.com>, <oofosschoenen.com>, <oofosschweiz.com>, <oofossg.com>, <oofosshoesaustralia.com>, <oofosshoescanada.com>, <oofosshoesireland.com>, <oofosshoesnearme.com>, <oofosshoesuk.com>, <oofosshoesusa.com>, <oofos-singapore.com>, <oofosskorsverige.com>, <oofossouthafrica.com>, <oofosuk.com>, <oofosuksale.com>, <oofosusasale.com>, <oofosza.com>, <sandaliasoofosoutlet.com> and <theoofosmall.com> domain names are registered with Alibaba.Com Singapore E-Commerce Private Limited and that one or another of the named respondents is the current registrant of the names. Alibaba.Com Singapore E-Commerce Private Limited has verified that the respondents are bound by the Alibaba.Com Singapore E-Commerce Private Limited registration agreement and have 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 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2022 by which the respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on the respondents’ registration as technical, administrative, and billing contacts, and to postmaster@oofosaanbieding.com, postmaster@oofosargentina.com, postmaster@oofos-australia.com, postmaster@oofoscanada.com, postmaster@oofos-canada.com, postmaster@oofoscanadasales.com, postmaster@oofoschile.com, postmaster@oofoscolombia.com, postmaster@oofosdamark.com, postmaster@oofos-espana.com, postmaster@oofosfootwearireland.com, postmaster@oofosfootwearnz.com, postmaster@oofosfootwearusa.com, postmaster@oofosfrance.com, postmaster@oofosireland.com, postmaster@oofosmalaysia.com, postmaster@oofosmalaysiashop.com, postmaster@oofos-norge.com, postmaster@oofosoutletmexico.com, postmaster@oofosoutletnorge.com, postmaster@oofosoutletsingapore.com, postmaster@oofosphilippines.com, postmaster@oofossaleaustralia.com, postmaster@oofossaleireland.com, postmaster@oofossandalerrea.com, postmaster@oofos-sandals.com, postmaster@oofossandalscanada.com, postmaster@oofossandalsnz.com, postmaster@oofossandalssale.com, postmaster@oofossandalssg.com, postmaster@oofosschoenen.com, postmaster@oofosschweiz.com, postmaster@oofossg.com, postmaster@oofosshoesaustralia.com, postmaster@oofosshoescanada.com, postmaster@oofosshoesireland.com, postmaster@oofosshoesnearme.com, postmaster@oofosshoesuk.com, postmaster@oofosshoesusa.com, postmaster@oofos-singapore.com, postmaster@oofosskorsverige.com, postmaster@oofossouthafrica.com, postmaster@oofosuk.com, postmaster@oofosuksale.com, postmaster@oofosusasale.com, postmaster@oofosza.com, postmaster@sandaliasoofosoutlet.com, postmaster@theoofosmall.com. Also on May 25, 2022, the Written Notice of the Complaint, notifying the respondents of the e-mail addresses served and the deadline for a Response, was transmitted to the respondents via post and fax, to all entities and persons listed on the respondents’ registration as technical, administrative and billing contacts.
Having received no response from the respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 the respondents.
Complainant requests that the domain names be transferred from the respondents to Complainant.
The disputed domain names are not registered to one holder. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Nevertheless, Complainant has alleged that the domain names are effectively controlled by a single person or entity, operating under several aliases.
The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there is reasonable evidence of a claim to actual control by one person or entity.
Even though the disputed domain names were registered over almost a 12-month period, Complainant submits that common control is shown by a constellation of commonalities or close similarities in terms of the structure of the
domain names themselves, the identical registrar in every case, the use of the same email, phone number and street address in each case, and so forth.
The Panel considers that there is compelling evidence of Complainant’s assertion of a single controlling entity and so allows these proceedings to continue against the named respondents, hereinafter referring to them collectively as “Respondent”.
A. Complainant
Complainant asserts trademark rights in OOFOS. Complainant holds a national registration for that trademark. Complainant submits that the domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells recovery footwear by reference to the trademark, OOFOS, registered with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 4,140,410 registered May 8, 2012;
2. the disputed domain names were registered between May 2021 and April 2022;
3. some of the disputed domain name resolve to webpages offering goods which compete with those sold by Complainant under the trademark; other disputed domain names resolve to inactive webpages; and
4. there is no association between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of the trademark with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain names with the trademark, the gTLD “.com” can be disregarded. That aside, the disputed domain names take the trademark to which they add:
(i) names or abbreviated names of countries: Argentina, Australia, Canada, Chile, Colombia, Espana (Spanish for Spain), France, Ireland, Malaysia, Mexico, Philippines, Singapore, South Africa, USA, Norge, NZ (abbreviation for New Zealand) and UK (abbreviation for United Kingdom) SG (abbreviation for Singapore), Schweiz (German for Switzerland), ZA and USA; and/or in some cases;
(ii) descriptive words or phrases: “mall”, “near me” “outlet”, “shoes” “store”, “sales”, “sandals”, “the”; “footwear”, “shop”, “sandale” (French for Sandal), “sandaler rea” (Swedish for “sandals sale”); “sko norge” (Norwegian for “shoe Norway”), “schoenen” (Dutch for “shoes”), “aanbieding” (Dutch for “offer”); Skorsverige, Sandalias (Portuguese for “sandals”).
None of those additions is of distinctive value and in each case the trademark remains the recognizable part of the domain name. Indeed, in those few instances where the additional matter may somehow obfuscate recognition of the trademark, the domain name employs hyphenation to make the trademark more obvious. As such, the Panel finds all the disputed domain names to be confusingly similar to the trademark (see, for example, Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”; Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding <franklincoveykorea.com> confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”; Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) finding <net2phone-europe.com> confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"; Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2014) ("...it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark."); General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) finding <gm-uzbekistan.com> confusingly similar to complainant’s GM mark; MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) finding <mfiuk.com> confusingly similar to the complainant’s MFI mark; see further, 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).”; Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
For the purposes of later discussion, the Panel finds it convenient to here make additional findings based on the evidence of trademark use presented with the Complaint. Complainant is based in the US but markets products under the trademark in Australia, Brazil, Canada, Colombia, Costa Rica, India, Indonesia, Israel, Kenya, New Zealand, Malaysia, Mexico, Norway, Philippines, Singapore, Switzerland, Costa Rica, Honduras, Taiwan, Korea, the UK, Denmark, and Saudi Arabia. The evidence is that international sales account for 15% of all sales and that Complainant has spent millions of dollars in advertisement and promotion of its goods in digital form, in print, via social media and on television.
Based on this evidence, the Panel finds that the trademark enjoys a significant reputation in the US if not more broadly in the recovery footwear market.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The names of the underlying domain name holders, as disclosed by the Registrar, are Client Care / Web Commerce Communications Limited / Domain Admin / Whoisprotection.cc. None of those names provides any indication that Respondent might be commonly known by any of the domain names. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark.
The evidence is that the disputed domain names fall into one of two categories – either those not in use, or those which resolve to a site selling footwear by reference to the trademark. With respect to that latter category, Complainant is ambivalent in its submissions as to whether the advertised footwear is counterfeit or merely “unauthorized” sale of its products. In either case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. Very clearly, the sale of counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain names under the Policy (see, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Further, the fact that Complainant is to some degree uncommitted to a claim that the promoted goods are counterfeit is unimportant since all that it need establish (as it has done) is that the trademark has been used without permission and Respondent has not shown itself to be an authorized re-seller of Complainant’s branded goods (see, for example, Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s marks, and were either counterfeit products or legitimate products of Complainant being resold without authorization).
The former class of domain names – those not in use – are, by definition, unlikely to give rise to rights or legitimate interests, in particular in a case such as this where the trademark appears to be both per se distinctive and distinctive by reason of use and there is no obvious reason why Respondent would adopt it in good faith (see, for example, Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) finding that non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii); Morgan Stanley v. Francis Mccarthy, FA 1785347 (Forum June 8, 2018) (“Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”); Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”)
Accordingly, the Panel finds that a prima facie case has been made out in respect of all the domain names. The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
For those domain names which have been used, the Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. The resolving websites exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the disputed domain names to attract, for commercial gain, internet users to its websites by creating a likelihood of confusion with as to the source, sponsorship, affiliation, or endorsement of those websites (see, for example, MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
For those domain names which have not been used, the Panel finds registration in bad faith and “use” in bad faith. The evidence is plain that Respondent has target Complainant and its trademark. Registration in bad faith is self-evident. Further, the Panel has already made the finding that the trademark has a reputation and so the Panel finds “passive holding” in bad faith in line with the reasoning in the decision of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which the Panel considers to directly apply to the circumstances of this case.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oofosaanbieding.com>, <oofosargentina.com>, <oofos-australia.com>, <oofoscanada.com>, <oofos-canada.com>, <oofoscanadasales.com>, <oofoschile.com>, <oofoscolombia.com>, <oofosdamark.com>, <oofos-espana.com>, <oofosfootwearireland.com>, <oofosfootwearnz.com>, <oofosfootwearusa.com>, <oofosfrance.com>, <oofosireland.com>, <oofosmalaysia.com>, <oofosmalaysiashop.com>, <oofos-norge.com>, <oofosoutletmexico.com>, <oofosoutletnorge.com>, <oofosoutletsingapore.com>, <oofosphilippines.com>, <oofossaleaustralia.com>, <oofossaleireland.com>, <oofossandalerrea.com>, <oofos-sandals.com>, <oofossandalscanada.com>, <oofossandalsnz.com>, <oofossandalssale.com>, <oofossandalssg.com>, <oofosschoenen.com>, <oofosschweiz.com>, <oofossg.com>, <oofosshoesaustralia.com>, <oofosshoescanada.com>, <oofosshoesireland.com>, <oofosshoesnearme.com>, <oofosshoesuk.com>, <oofosshoesusa.com>, <oofos-singapore.com>, <oofosskorsverige.com>, <oofossouthafrica.com>, <oofosuk.com>, <oofosuksale.com>, <oofosusasale.com>, <oofosza.com>, <sandaliasoofosoutlet.com> and <theoofosmall.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 23, 2022
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