OOFOS, INC. v. Client Care / Web Commerce Communications Limited / Mayandican / ZhouRunFa / Julius Bergman
Claim Number: FA2211002020364
Complainant is OOFOS, INC. (“Complainant”), represented by Corsearch, Inc., Texas. Respondent is Client Care / Web Commerce Communications Limited / Mayandican / ZhouRunFa / Julius Bergman (“Respondent”), MY.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <canada-oofos.com>, <oofoos-sale.com>, <oofosaustraliastockists.com>, <oofos-canadasale.com>, <oofoschiles.com>, <oofosclearancesale.com>, <oofosindia.com>, <oofos-ireland.com>, <oofos-malaysia.com>, <oofosmalaysias.com>, <oofosnl.com>, <oofosnorgeoutlet.com>, <oofos-nz.com>, <oofosonsale.com>, <oofosoolala.com>, <oofosoutletcanada.com>, <oofosoutletfactory.com>, <oofosoutletmalaysia.com>, <oofosoutletonline.com>, <oofosrebajas.com>, <oofosshoeaustralia.com>, <oofosskorsveriges.com>, <oofos-slipper.com>, <oofosslovenia.com>, <oofossport.com>, <oofos-uk.com>, <oofosukstockists.com>, <oofsandals.com>, and <usoofoshoes.com>, registered with Alibaba.Com Singapore E-Commerce Private Limited; 1Api Gmbh.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on November 15, 2022; Forum received payment on November 15, 2022.
On November 16, 2022, Alibaba.Com Singapore E-Commerce Private Limited; 1Api Gmbh confirmed by e-mail to Forum that the <canada-oofos.com>, <oofoos-sale.com>, <oofosaustraliastockists.com>, <oofos-canadasale.com>, <oofoschiles.com>, <oofosclearancesale.com>, <oofosindia.com>, <oofos-ireland.com>, <oofos-malaysia.com>, <oofosmalaysias.com>, <oofosnl.com>, <oofosnorgeoutlet.com>, <oofos-nz.com>, <oofosonsale.com>, <oofosoolala.com>, <oofosoutletcanada.com>, <oofosoutletfactory.com>, <oofosoutletmalaysia.com>, <oofosoutletonline.com>, <oofosrebajas.com>, <oofosshoeaustralia.com>, <oofosskorsveriges.com>, <oofos-slipper.com>, <oofosslovenia.com>, <oofossport.com>, <oofos-uk.com>, <oofosukstockists.com>, <oofsandals.com>, and <usoofoshoes.com> domain names are registered with Alibaba.Com Singapore E-Commerce Private Limited; 1Api Gmbh and that Respondent is the current registrant of the names. Alibaba.Com Singapore E-Commerce Private Limited; 1Api Gmbh has verified that Respondent is bound by the Alibaba.Com Singapore E-Commerce Private Limited; 1Api Gmbh 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 November 22, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 2022 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@canada-oofos.com, postmaster@oofoos-sale.com, postmaster@oofosaustraliastockists.com, postmaster@oofos-canadasale.com, postmaster@oofoschiles.com, postmaster@oofosclearancesale.com, postmaster@oofosindia.com, postmaster@oofos-ireland.com, postmaster@oofos-malaysia.com, postmaster@oofosmalaysias.com, postmaster@oofosnl.com, postmaster@oofosnorgeoutlet.com, postmaster@oofos-nz.com, postmaster@oofosonsale.com, postmaster@oofosoolala.com, postmaster@oofosoutletcanada.com, postmaster@oofosoutletfactory.com, postmaster@oofosoutletmalaysia.com, postmaster@oofosoutletonline.com, postmaster@oofosrebajas.com, postmaster@oofosshoeaustralia.com, postmaster@oofosskorsveriges.com, postmaster@oofos-slipper.com, postmaster@oofosslovenia.com, postmaster@oofossport.com, postmaster@oofos-uk.com, postmaster@oofosukstockists.com, postmaster@oofsandals.com, and postmaster@usoofoshoes.com. Also on November 22, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. In support of this allegation it states:
a) All disputed domain names incorporate the OOFOS mark;
b) All disputed domain names are constructed similarly, mostly starting with the OOFOS mark followed by a geographical or generic term;
c) The disputed domain names’ resolving webpages show Complainant’s mark and logo and offer counterfeit or unauthorized versions of Complainant’s products;
d) Most of the disputed domain names are registered with the same registrar;
e) Most of the disputed domain names list the same Organization in their WHOIS information, i.e., Web Commerce Communications;
f) Web Commerce Communications’ address and phone number are the same, i.e., Kuala Lumpur, MY;
g) The disputed domain names’ IP addresses have similar ranges;
h) The disputed domain names were registered primarily in two temporal batches, i.e. June and October 2022;
i) Registrants “Mayandican”, “ZhouRunFa”, and “Web Commerce Communications” have been found to have registered and used disputed domain names in bad faith in previous UDRP proceedings.
j) Registrant “Julius Bergman” was found to be an alias for “Web Commerce Communications” in a previous UDRP proceeding.
Allegations (a) through (i) above are not, in and of themselves, sufficient to support finding that the domain names are under common control. However, the resolving website for one of the domain names registered by “Mayandican” is essentially identical to most of the resolving websites for the domain names registered by “Web Commerce Communications”. Further, as correctly stated in (j) above, “Julius Bergman” has been found to be an alias for “Web Commerce Communications”. This is sufficient evidence to find that all the domain names are under common control and were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on all of the contested domain names, and the registrants are collectively referred to as “Respondent”.
A. Complainant
Complainant states that it was founded in 2011. It is the global leader in recovery footwear, founded by a team of industry veterans looking to help runners and fitness enthusiasts recover better from their workouts. Complainant, together with its proprietary cutting-edge Oofoam® technology and its patented footbed design, created extraordinarily comfortable footwear collections. Complainant’s recovery footwear has earned loyalty among runners and fitness-minded individuals. Anyone who spends significant time on their feet, leads a healthy and active lifestyle, or simply suffers from painful foot ailments will benefit from the technology Complainant has crafted into an amazingly comfortable shoe. The footwear are designed to absorb 37% more impact than traditional footwear. They reduce stress on joints to keep anyone feeling their best. Complainant’s recovery footwear is now being sold in 18 countries around the world. Over the last 12 months, the company has opened up seven new international markets including Costa Rica, Honduras, Taiwan, Korea, the UK, Denmark, and Saudi Arabia. International growth is also being fueled by strong sales in Thailand, Australia, New Zealand and Canada. Complainant and its products enjoy widespread consumer recognition, thanks to millions of dollars in advertisement and promotion of their product in digital, print, TV, and social media such as Facebook, Twitter, Pinterest, YouTube and Instagram. Complainant asserts rights in the OOFOS mark based upon its registration in the United States in 2012. The mark is registered elsewhere around the world and it is well known.
Complainant alleges that the disputed domain names are confusingly similar to its OOFOS mark because they incorporate the mark in its entirety, merely adding various geographical terms, generic terms, hyphens, and the generic top-level domain name (“gTLD”) “.com”.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s OOFOS mark and is not commonly known by the disputed domain names. Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent fails to make active use of the <oofoschiles.com>, <oofosmalaysias.com>, <oofosonsale.com>, <oofosrebajas.com> and <oofossport.com> domain names. The other domain names are used to sell counterfeit or unauthorized versions of Complainant’s products.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent has a history of adverse UDRP decisions. Respondent fails to make active use of the <oofoschiles.com>, <oofosmalaysias.com>, <oofosonsale.com>, <oofosrebajas.com> and <oofossport.com> domain names. The other domain names are used to sell counterfeit or unauthorized versions of Complainant’s products. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the OOFOS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademarks for the mark OOFOS and uses it to market footwear. The mark was registered in 2012 and it is well known.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names were registered in 2022.
Most of the resolving websites offer for sale unauthorized or counterfeit versions of Complainant’s products. Most of the resolving websites display Complainant’s mark and distinctive logo, as well as photos of Complainant’s products. Five of the disputed domain names are not used. Complainant has engaged in a pattern of bad faith registration and use of domain names.
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. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The domain name <oofsandals.com> resolves to a website that displays Complainant’s mark and distinctive logo, and offers for sale counterfeit or unauthorized versions of Complainant’s products. According to 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Jurisprudential Overview 3.0”), “In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity.” Here, the website trades off Complainant’s reputations and Respondent has engaged in a pattern of registering multiple domain names that target Complainant’s mark. Thus, the Panel finds that the <oofsandals.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The domain name <oofoos-sale.com> consists of a misspelling of Complainant’s OOFOS mark (an extra “o” is added), merely adding a hyphen and the generic term “sale”, together with the “.com” gTLD. Such changes are insufficient to overcome confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Liberty Mutual Insurance Company v. Texas Internet, FA1006001330686 (Forum August 3, 2010) (holding <libertymutul.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark as the respondent simply omitted the letter “a”); see also Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (“The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”). Thus, the Panel finds that the <oofoos-sale.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The other disputed domain names incorporate Complainant’s OOFOS mark in its entirety, merely adding various geographical terms, generic terms, hyphens, and the gTLD “.com”. Such changes are not sufficient to distinguish the disputed domain names from Complainant’s mark per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is 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).”); see also 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). Therefore, the Panel finds that the other disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not licensed or otherwise authorized to use Complainant’s OOFOS mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information for the disputed domain names lists the registrant as “Client Care / Web Commerce Communications Limited / Mayandican / ZhouRunFa / Julius Bergman.” Therefore the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii)
Instead, Respondent fails to make active use of the <oofoschiles.com>, <oofosmalaysias.com>, <oofosonsale.com>, <oofosrebajas.com> and <oofossport.com> domain names. Failure to make active use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Thus the Panel finds that Respondent fails to use the <oofoschiles.com>, <oofosmalaysias.com>, <oofosonsale.com>, <oofosrebajas.com> and <oofossport.com> domain names to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent uses the other disputed domain names to sell counterfeit or unauthorized versions of Complainant’s products. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See 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 MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Thus the Panel finds Respondent fails to use the other disputed domain names to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
And, for all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, Respondent has a history of adverse UDRP decisions. Prior adverse UDRP decisions evince bad faith registration and use under Policy ¶ 4(b)(ii), as can multiple infringing registrations. See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”); see also Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1520008 (Forum Nov. 7, 2013) (respondent’s registration of multiple infringing domain names established a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(ii).
As already noted, most of the disputed domain names are used to sell unauthorized or counterfeit versions of Complainant’s products. This is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Crocs, Inc. v. jing dian, Case No. FA1410001587214 (Forum Dec. 12, 2014) (finding bad faith where the respondent used the disputed domain name to display the complainant’s marks to sell unauthorized goods); see also Swarovski Aktiengesellschaft v. ailong c ailong xiong, Case No. FA1407001571172 (Forum Sept. 5, 2014) (finding bad faith where respondent used the disputed domain name in connection with a website purportedly offering unauthorized goods of Complainant and stating that the respondent’s bad faith was “apparent in that [r]espondent is profiting from the likelihood Internet users will mistakenly believe the goods sold through the domain name’s website are legitimate…”); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). The Panel therefore finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Also as already noted, Respondent fails to make active use of the <oofoschiles.com>, <oofosmalaysias.com>, <oofosonsale.com>, <oofosrebajas.com> and <oofossport.com> domain names. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no response to the Complaint. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: most of the resolving websites display Complainant’s mark and distinctive logo as well as photos of Complainant’s products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <canada-oofos.com>, <oofoos-sale.com>, <oofosaustraliastockists.com>, <oofos-canadasale.com>, <oofoschiles.com>, <oofosclearancesale.com>, <oofosindia.com>, <oofos-ireland.com>, <oofos-malaysia.com>, <oofosmalaysias.com>, <oofosnl.com>, <oofosnorgeoutlet.com>, <oofos-nz.com>, <oofosonsale.com>, <oofosoolala.com>, <oofosoutletcanada.com>, <oofosoutletfactory.com>, <oofosoutletmalaysia.com>, <oofosoutletonline.com>, <oofosrebajas.com>, <oofosshoeaustralia.com>, <oofosskorsveriges.com>, <oofos-slipper.com>, <oofosslovenia.com>, <oofossport.com>, <oofos-uk.com>, <oofosukstockists.com>, <oofsandals.com>, and <usoofoshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 21, 2022
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