DECISION

 

Thorp Direct Sales, Inc. and Smoky Mountain Boots Inc. v. Khne Behui

Claim Number: FA2308002058639

PARTIES

Complainants are Thorp Direct Sales, Inc. and Smoky Mountain Boots Inc. ("Complainant") of Lawrenceville, Georgia, USA, represented by Robert Thorp, Lawrenceville, Georgia, USA. Respondent is Khne Behui ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mountainsmoky.com>, registered with Name.com, Inc.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Gerald M. Levine, Douglas M. Isenberg, and Charles Kuechenmeister as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 23, 2023; Forum received payment on August 23, 2023.

 

On August 24, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <mountainsmoky.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 August 25, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2023 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@mountainsmoky.com. Also on August 25, 2023, 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 September 21, 2023, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Gerald M. Levine, Douglas M. Isenberg, and Charles Kuechenmeister as Panelists.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS 

Ordinarily, where there are multiple complainants against a single respondent and there is a common grievance, they may be consolidated for efficiency (UDRP Rule 10(e)). At first glance, this is such a case. However, this proceeding is commenced by two parties as joint Complainant rather than two complainants. Robert Thorpe, the signatory on this complaint, explains that Thorpe Design Sales, Inc. ("Thorpe") and Smoky Mountain Boots ("SMB") "are affiliated companies with common ownership and together they operate the boot sales business known as Smoky Mountain Boots. Thorpe is the USPTO registered mark owner of SMOKY MOUNTAIN BOOTS, and SMB is its retail outlet. However, Mr. Thorpe does not designate to whom the transfer of registration of <mountainsmoky.com> (hereinafter, the "Disputed Domain Name") is to be effected, but as he refers to the two parties as "Complainant" the Panel will follow that direction in awarding the requested relief. 

 

PARTIES' CONTENTIONS

A. Complainant 

Complainant in its joint operation is a family-owned business. Thorpe owns trademarks for the term SMOKY MOUNTAIN BOOTS in the United States and China (the jurisdiction in which Respondent is domiciled). It has been conducting its boots business from as early as 1992. The Disputed Domain Name was registered on May 16, 2022, and currently resolves to a website impersonating Complainant and offering to sell its Western-styled boots at a discount. 

 

Complainant calls the Panel's attention to an earlier UDRP proceeding involving Respondent impersonating another mark owner in the boot business in which the Panel found it liable for cybersquatting, Boot Barn, Inc. v. Domain Protection Services, Inc., Case No. D2022-3018 (October 10, 2022). Thus, Respondent already has a strike against it in developing together with this complaint a "pattern of such conduct" as proscribed under Paragraph 4(b)(ii) of the Policy.      

 

B. Respondent

Respondent failed to submit a Response in this proceeding. The Disputed Domain Name resolves to a webpage that impersonates Complainant down to copying Complainant's logo and photographs of the boots as they appear on Complainant's official website at <smokyboots.com>. 

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Thorpe owns registered trademarks in the United States and China for the term SMOKY MOUNTAIN BOOTS and together with SMB operates retail operations for Western-style boots on its website at <smokyboots.com>.  

2.       Complainant has been marketing Western-style boots since 1992.

3.       The Disputed Domain Name was registered on May 16, 2022.

4.       The Disputed Domain Name resolves to a website passing itself off as SMB.

5.       Complainant did not authorize Respondent to register <mountainsmoky.com> or to use it to sell its Western-style boots.

6.       Respondent registered and is using the Disputed Domain Name in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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:

 

(i)       the domain name registered by Respondent is identical or confusingly   similar to a trademark or service mark in which Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)       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. As a general rule, the Panel is entitled to accept all credible allegations and reasonable contentions set forth in a complaint as well as the uncontroverted facts of record.  

 

Identical and/or Confusingly Similar

 

Paragraph 4(a)(i) of the Policy is construed as a test of standing to maintain a UDRP proceeding, and it has two parts. The first part asks whether the complainant has a right to a mark, and if it does the second test asks whether the disputed domain name is identical or confusingly similar to that mark.

 

In support of the first part of the test, Complainant has annexed copies of its USPTO Registration No. 6,105,760 (registered July 21, 2020) and China Registration No. 8703328 dated 2010 (but uncertain as to month and day since they are in Chinese characters) for the term SMOKY MOUNTAIN BOOTS ("Boots" disclaimed). Panels have found that registered rights from any national jurisdiction satisfy the first part of Paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0" at paragraph 1.2.1.

 

At the threshold for the second part of the test it is necessary only to consider "whether a domain name is similar enough in light of the purpose of the Policy to justify moving on to the other elements of a claim for cancellation or transfer of a domain name," Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, D2000-1415 (WIPO January 23, 2001). The Panel notes further that "numerous prior panels have held [the purposes of the Policy are satisfied] when a domain name wholly incorporates a complainant's registered mark." 

 

Here, the Disputed Domain Name is not identical to SMOKY MOUNTAIN BOOTS and it raises a question as to whether the phrase "mountain smoky" is confusingly similar to "Smoky Mountain Boots." "Smoky Mountain" is a geographic signifier. It has reference to The Great Smoky Mountains that border Tennessee and North Carolina in the southeastern United States. Complainant is not the only mark owner who has chosen "Smoky Mountain" to prefix its product line.

 

The practice in determining whether a mark is confusingly similar to a disputed domain name is to make a side-by-side comparison of the two. In this case, the Panel notes that the Disputed Domain Name and Complainant's mark are similar to the geographic signifier in the sense that they use the same words but different in that the words Smoky and Mountain are inverted. Instead of SMOKY MOUTAIN there is "mountain smoky." Panels have long determined that inversion of letters and words may support confusing similarity in the proper case where the evidence establishes bad faith. The Complainant refers the Panel to a number of decisions that support this proposition. The Panel accepts the consensus view expressed in these cases.  

 

However, is this a proper case where "mountain smoky" is not strictly speaking confusingly similar where it does not also include the word "boots." If inversion of words that together might not be registrable as marks were all the evidence adduced, the Panel would have to conclude that though the Disputed Domain Name and mark may be similar they are not confusingly similar. But this is not all the evidence there is, and the question for the Panel is whether it has discretion to look ahead at evidence which properly belongs to assessing the issue of bad faith.

 

This issue has attracted a good amount of attention by prior Panels. The Panel in Kames Capital PLC v. Tom Harrison / Kames Capital Plc Limited, FA 1671583 (Forum May 20, 2016) concluded its analysis by stating that "it has some, although limited, discretion in determining whether or not to consider the content of the resolving webpage in making a Policy ¶ 4(a)(i) decision." This discretion of looking at evidence of bad faith to determine a Policy 4(a)(i) decision has percolated to consensus as noted in the WIPO Overview, 3.0, Sec. 1.15: "In some instances, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name." Also Everytown for Gun Safety Action Fund, Inc. v. IGI NA / IGI NA CORP, FA 1897076 (Forum June 23, 2020) ("In the present case, by reason of the facts outlined under the elements below, it is clear that Respondent has sought to target and indeed pass itself off as Complainant through the use of the Domain Name."). 

 

This Panel agrees with the reasoning and logic expressed by prior Panels that confusing similarity is clarified by examining the evidence of use.  Examining the issue from this perspective the Panel finds that the Respondent is using the Disputed Domain Name to pass itself off as Complainant by activating a website that impersonates Complainant. Under these circumstances, incorporating and inverting the dominant words of Complainant's mark are sufficient "to justify [the Complainant] moving on to the other elements of [its] claim for cancellation or transfer of a domain name," Kidman, supra.

 

Accordingly, Complainant satisfies its burden under Paragraph 4(a)(i) of the Policy.    

 

Rights or Legitimate Interests

 

Finding that a complainant has rights and that a disputed domain name is confusingly similar to its mark does not establish that a respondent lacks rights or legitimate interests. In this case, though, the record irrefutably establishes that Respondent is using the Disputed Domain Name to pass itself off as Complainant and that it has done so without permission to register the Disputed Domain Name or authority to offer Complainant's products. As such, Complainant has put forward a prima facie case that Respondent lacks rights or legitimate interests in <mountainsmoky.com>.

 

The Policy offers respondents the opportunity to counter complainant's prima facie evidence on rebuttal proof of three nonexclusive circumstances:

 

i.                      "[B]efore 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."

ii.        "[Y]ou (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."

iii.        "[Y]ou 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."

 

The Respondent has foregone the opportunity of defending itself. Although default is not by itself sufficient to conclude that a respondent lacks rights or legitimate interests, silence where a party is expected to respond to a prima facie case supports an inference that it has no defense to offer.

 

The Respondent does not controvert Complainant's contention that it is not using the Disputed Domain Name "in connection with a bona fide offering of goods or service," is not "commonly known" by "Mountain Smoky", and the content of the resolving website does not support a "noncommercial or fair use" of the Disputed Domain Name.

 

As no argument to the contrary would be sufficient to rebut the evidence of record, it therefore follows that Respondent lacks rights or legitimate interests in the Disputed Domain Name. See American International Group, Inc. v. Walter Busby d/b/a AIG Mergers and Acquisitions, FA 156251 (holding that Respondent's attempt "to pass itself off as Complainant online [is a] ][. . .] blatant unauthorized use of Complainant's mark [and as such] is evidence that Respondent has no rights or legitimate interests in the disputed domain name." "Simply put, Respondent's use of the disputed domain name to impersonate another for a deceitful purpose cannot in any sense of the word be seen as being legitimate or evidencing a bona fide right or legitimate interest," Skyscanner Limited v. Shawaz Khan, Case No. D2021-0148.

 

Accordingly, Complainant satisfies its burden under Paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

 

The Panel has examined the copy of Respondent's website annexed to the complaint and has also reviewed Complainant's website. It finds that this faux website is a picture image of Complainant's website at <smokyboots.com> down to copies of Complainant's copyrighted logo and photographs of its offered boots. Except for the change of copyright notice to "2023 © www.mountainsmoky.com" it could be mistaken for Complainant's website. The impersonator invites Internet users to purchase Complainant's goods at a discount and to pay for their purchases by credit card and by this means engages in a fraudulent scheme to dupe and scam innocent Internet users for their personal information and collect payments without delivering the goods. 

 

Mr. Thorpe has brought to the Panel's attention proof that Respondent is actually duping and scamming consumers. He states in his declaration of personal knowledge that he received a complaint from a dissatisfied customer: "[1] On April 16, 2023, the Company received an email complaint from a customer regarding boots they attempted to buy from www.mountainsmoky.com [. . .] [2] In a subsequent conversation with such customer, the customer informed me that the Infringing Site charged them for the boots, but the boots were never delivered. [And 3] My understanding is that the customer has still never received the boots despite being charged for them."

Impersonation as a tactic to lure Internet users to purchase fake or nonexistent goods associated with complainant is itself direct evidence of bad faith. Taking this and the other circumstances together support the conclusion that Respondent is using the Disputed Domain Name with the "intention [of]  attract[ing], for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location." It follows from this that as the purpose is evidenced by its use, then the Disputed Domain Name was also registered in bad faith.

  

Accordingly, Complainant succeeds on its burden under Paragraph 4(a)(iii) of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mountainsmoky.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Gerald M. Levine, as Chair, along with

Douglas M. Isenberg and Charles Kuechenmeister

As Panelists

Dated: September 28, 2023