Implus Footcare LLC v. Domain Drop S.A.
Claim Number: FA0606000741848
Complainant is Implus Footcare LLC (“Complainant”), represented by Fred W. Hathaway, of Buchanan Ingersoll & Rooney PC, 1737 King Street Suite 500, Alexandria, VA 22314. Respondent is Domain Drop S.A. (“Respondent”), c/o Morning Star Holdings Ltd., P.O. Box 556, Main Street, Charlestown, West Indies KN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwsofsole.com>, registered with Domaindoorman, Llc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 3, 2006.
On July 6, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <wwwsofsole.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 31, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwsofsole.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." 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 makes the following assertions:
1. Respondent’s <wwwsofsole.com> domain name is confusingly similar to Complainant’s SOF SOLE mark.
2. Respondent does not have any rights or legitimate interests in the <wwwsofsole.com> domain name.
3. Respondent registered and used the <wwwsofsole.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Implus Footcare LLC, has used the SOF SOLE mark in connection with offering footwear related goods and services since 1989. Specifically, the SOF SOLE mark is associated with impact absorbing footwear insoles, shoelaces, socks, show cleaners and shoe polish. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the SOF SOLE mark (Reg. No. 1,699,999 issued July 07, 1992; Reg. No. 2,686,473 issued February 11, 2003; Reg. No. 2,862,346 issued July 13, 2004; Reg. No. 2,868,609 issued August 3, 2004). Complainant has registered multiple domain names including the SOF SOLE mark, for example <sofsole.com>, <sofesole.org>, and <sofesole.net>, for use in connection with providing Complainant’s footwear goods and services to Internet users.
Respondent registered the <wwwsofsole.com> domain name on April 15, 2006. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring links to third-party commercial websites offering footwear goods and services. Examples of competing links include “insoles for shoes,” “superfeet orthotic insole,” and “arch supports.” Respondent’s website also includes links to third-party websites unrelated to Complainant, for example “ “travel,” “financial planning,” “lifestyle” and “real estate,” as well as a generic Internet search engine.
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."
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.”).
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.
Complainant has established rights in the SOF SOLE mark
through registration with the USPTO.
Complainant’s original registration of the SOF SOLE mark preceded
Respondent’s registration of the disputed domain name by close to fourteen
years. The Panel finds that Complainant
has established rights in the SOF SOLE mark as required under Policy ¶
4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Innomed Techs., Inc.
v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Respondent’s <wwwsofsole.com> domain name is confusingly similar to Complainant’s SOF SOLE mark. The disputed domain name includes Complainant’s mark in its entirety with the addition of the letters “www” at the beginning of the mark. The disputed domain name mimics a common typing error that occurs when typing a domain name into web browsers in which Internet users leave out the period between the “www” and the rest of the domain name. The Panel finds that Respondent’s attempt to mimic a common typing error does not create a distinct domain name and the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s assertion that Respondent lacks rights or legitimate interests in the <wwwsofsole.com> domain name constitutes a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent has the opportunity to fulfill this burden by filing a Response, and Respondent’s failure to do so suggests that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel will examine the available evidence in order to ascertain whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”)
Respondent is using the <wwwsofsole.com> domain name to redirect Internet users to Respondent’s website composed of links to third-party websites in direct competition with Complainant, links to websites with no relationship to Complainant and a generic Internet search engine. Presumably, Respondent is receiving pay-per-click referral fees from the links and search engine. The Panel finds that such use does not constitute a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that the respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain names).
Complainant asserts without contradiction that Respondent is
not commonly known by the <wwwsofsole.com> domain name. Respondent’s WHOIS information identifies
Respondent as “Domain Drop S.A.,” a name apparently unrelated to the disputed
domain name. Furthermore, Complainant
contends that Respondent is not affiliated with or sponsored by Complainant and
that Complainant has not authorized Respondent to use Complainant’s mark in any
way. Finally, it is unlikely that
Respondent is known by the disputed domain name since the disputed domain name
is not a real word or phrase. Thus, the
Panel finds that Respondent is not commonly known by the disputed domain name
and lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum
Feb. 6, 2003) (“Considering the nonsensical nature of the
[<wwwmedline.com>] domain name and its similarity to Complainant’s
registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶
4(c)(ii) does not apply to Respondent.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <wwwsofsole.com> domain name is
confusingly similar to Complainant’s SOF SOLE mark The disputed domain name adds the letters “www” to the beginning
of Complainant’s mark, mimicking the typing error commonly made by Internet
users when they leave out the period after the “www” when typing a domain name
into a web browser. Because the
disputed domain name is confusingly similar and easily created through a typing
error Internet users may be redirected to Respondent’s website. Once at Respondent’s website, the confusing
similarity between the disputed domain name and Complainant’s SOF SOLE mark
makes it likely that some Internet users may mistakenly believe that
Respondent’s website is affiliated with Complainant. Respondent is capitalizing on this confusion by populating its
website with links to third-party websites and a generic Internet search engine
which presumably generate pay-per-click fees for Respondent. The Panel finds that Respondent’s use of a
confusingly similar domain name to attract Internet users to Respondent’s
website for Respondent’s financial gain is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also TM
Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”).
Respondent is using the <wwwsofsole.com> domain
name to redirect Internet users to Respondent’s website populated predominantly
with links to commercial third-party websites in direct competition with
Complainant. The disputed domain name
is confusingly similar to Complainant’s SOF SOLE mark and thus attracts
Internet users, as discussed above. In
addition to generating profits for Respondent via pay-per-click fees, the
disputed domain name also diverts Complainant’s potential customers away from
Complainant’s genuine website to Respondent’s website with its competing
third-party links. When Internet users
click on the third-party links and are redirected to competitors’ websites,
Complainant loses those customers, thus disrupting Complainant’s business. The Panel finds that Respondent’s use of a
confusingly similar domain name to disrupt Complainant’s business is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Puckett, Individually v. Miller, D2000-0297
(WIPO June 12, 2000) (finding that the respondent has diverted business from
the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwsofsole.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 17, 2006
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