Complainant is Crocs Inc. of Niwot, Coorado, United States of America, represented by Beijing Jieding IP Agency Co., Ltd., China.
Respondent is Alex Xie of putian, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2011. On September 7, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On October 7, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 6, 2011.
The Center appointed Yijun Tian as the sole panelist in this matter on October 19, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background A. Complainant
Complainant, Crocs Inc. is a company incorporated in Niwot, Coorado, United States of America (“U.S.A.”). Complainant is the owner of the distinctive and famous CROCS trademarks (the “CROCS Marks”), including in China (since 2005) (Annex 17-18 to the Complaint) and in U.S.A. (since 2005) (Annex 19-22 to the Complaint).
Complainant is a reputable shoes company which decided to develop and produce specifically for outdoor rowing campaign designed footwear. Complainant started to explore the Chinese market since April 2006. It has opened hundreds of retail shops in many major cities in China, including Beijing, Shanghai, Nanjing, Shenzhen, Guanzhou and Hong Kong (Annex to 13 the Complaint). And Complainant has been the subject of extensive media coverage (Annex 11-14 to the Complaint). B. Respondent
Respondent registered on June 27, 2011, which is long after Complainant operated its business under CROCS Marks since 2002 (in China since 2005). 5. Parties’ Contentions A. Complainant
(a) The Domain Name of Respondent is identical or confusingly similar to Complainant’s CROCS Marks
Respondent’s Domain Name is confusingly similar to Complainant’s registered CROCS Marks.
The main part of the Domain Name contained “crocs” and “outlet”. “Crocs” is completely identical to CROCS Marks which Complainant registered. “Outlet” is a common word and has the meaning of “discount shop”.
In “About Us” section of the website at the Domain Name, Respondent described itself as Complainant’s company, and used CROCS Marks and image on its website.
Internet users will likely be confused into believing that there is a business connection between the website at the Domain Name and Complainant. The use of “outlet” with CROCS Marks strengthened the confusion.
(b) Respondent has no rights or legitimate interests in the Domain Name
Respondent does not have any trademark right in the Domain Name in dispute. Respondent does not have any CROCS Marks (Annex 28 to the Complaint), and is not affiliated with Complainant in any way.
Complainant has not authorized or licensed Respondent to use CROCS Marks or register any domain name incorporating the CROCS Marks;
Respondent does not have a name right in the Domain Name. The name of Respondent is “Alex Xie”, not “crocs”.
(c) Respondent registered the Domain Name in bad faith.
Respondent clearly knew Complainant and its CROCS Marks, but he still registered and used the Domain Name. Thus, Respondent’s conducts are in bad faith.
The purpose that Respondent registered and used the Domain Name is to jeopardize normal business operation of Complainant. This constitutes bad faith. The prices of most CROCS branded products, which Respondent sells on the website at the Domain Name, are 40% lower than those of Complainant. (Annex 7 to the Complaint)
According to Complainant, Respondent registered and used the Domain Name which is confusingly similar with the CROCS Marks of Complainant, and was selling counterfeit products on the website at the Domain Name. This further constitutes bad faith.
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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreement for the Domain Name is English. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be Chinese. Complainant filed initially its Complaint in Chinese, and has requested that Chinese be the language of the proceeding for the following reasons:
(a) Respondent’s name is Alex Xie, and his residential address is in putian, Fujian, China. His contact mobile is a Chinese number. (Annex 6 to the Complaint). Complainant therefore reasonably believes that Respondent is Chinese and his native language is Chinese.
(b) Although the content of the website at the Domain Name is in English, the website provided Internet users with RMB (Chinese Yuan) payment method. This indicates that Respondent also provides products for Chinese consumers, and has certain Chinese language capability (Annex 7 to the Complaint).
(c) If English is chosen as the language of proceeding, Complainant may have to translate all proceeding documents into English. This will not only result in additional cost of Complainant but also may defer the administrative proceeding.
(d) Although Respondent registered and managed the Domain Name through non-Chinese domain name registrar, Respondent‘s native language is Chinese. In this case, both parties are familiar with Chinese. Chinese should be used as the language of proceedings.
The Panel notes that Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of Chinese as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company incorporated in the U.S.A. The Panel also noticed that Complainant has appointed a Chinese representative in this case, and the representative of Complainant has submitted all proceeding documents in Chinese. The Panel has also taken into consideration the fact that the website at the Domain Name includes an English word “outlet” (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be an individual in China and presumably he can speak Chinese. But no sufficient evidence demonstrates that Chinese is Respondent’s native language. By contrast, the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the Domain Name is registered in Latin characters and particularly in English language, rather than Chinese script; (b) Respondent’s name is “Alex Xie”. Although Xie is typical Chinese surname, that the first name “Alex” is a English name; (c) The language of the Registration Agreement for the Domain Name is English (d) Respondent’s website at the Domain Name appears entirely in the English language, and appears to have been directed to Internet users in worldwide (particularly English speakers) rather than Chinese speakers (although Chinese Yuan is also one of payment methods); (e) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that Chinese be the language of the proceeding; (f) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, in order to balance the benefits of both parties, the Panel decides that the Panel would accept the Chinese proceeding documents submitted by Complainant, and would not require Complainant to translate these documents into English. And the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Name should be transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the CROCS Marks acquired through registration. The CROCS Marks have been registered worldwide including in the U.S.A. and China since 2005 (See Annex 17-22) and it has a widespread reputation in the field of producing specifically for outdoor rowing campaign designed footwear.
The Domain Name comprises the CROCS Marks in its entirety. The Domain Name only differs from the CROCS Marks by the addition of the word “outlet”. The Panel finds that this does not eliminate the similarity between Complainant’s registered CROCS Marks and the Domain Name.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; and PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Claim No. 0500065).
“Outlet” has the meaning of “discount shop”. Mere addition of the descriptive term “outlet” as a suffix to Complainant’s mark in the Domain Name fails to distinguish. Thus, the Panel finds that the addition of the term “outlet” is not sufficient to negate the confusing similarity between the Domain Name and the CROCS Marks in which Complainant has rights.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the Domain Name:
(i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the Domain Name; or
(iii) legitimate noncommercial or fair use of the Domain Name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the CROCS Marks worldwide, including China and the U.S.A. Complainant has currently opened hundreds of retail shops in many major cities in China, including Beijing, Shanghai, Nanjing, Shenzhen, Guanzhou and Hong Kong (Annex to 13 the Complaint). And Complainant has been the subject of extensive media coverage (Annex 11-14 to the Complaint).
Moreover, according to Complainant, Respondent is not an authorized dealer of CROCS-branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the Domain Name:
(a) There has been no evidence adduced to show that Respondent is using the Domain Name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the Domain Name or reasons to justify the choice of the word “crocs” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the CROCS Marks or to apply for or use any domain name incorporating the CROCS Marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the Domain Name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the Domain Name. The Domain Name was registered on June 27, 2011, and Complainant started to use CROCS marks on its products since 2002 (long before the registration of the Domain Name). The Domain Name is identical or confusingly similar to Complainant’s CROCS Marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the Domain Name.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the Domain Name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) 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) 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 websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the Domain Name in bad faith. a). Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the CROCS Marks with regard to its products. Complainant has registered its CROCS Marks in many countries, including registration in U.S.A. and China since 2005. Complainant has also been the subject of extensive media coverage. In this Panel’s view, It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Name (in June 2011). The Panel therefore finds that the Domain Name is not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the [r]espondent to respond to the [c]omplaint further supports an inference of bad faith. (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).” Thus, the Panel concludes that the Domain Name was registered in bad faith with the intent to create an impression of an association with Complainant’s CROCS Marks. b). Used in Bad Faith
With respect to , Complainant has adduced evidence to prove that by using a confusingly similar Domain Name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website. Complainant claimed that Respondent registered and used the Domain Name is to jeopardize normal business operation of Complainant. The prices of most CROCS branded products on Respondent’s website are 40% lower than those of Complainant (Annex 7 to the Complaint).
To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Respondent’s website at the Domain Name is very similar with the websites of Complainant (Annex 7, 24 and 25 to the Complaint). Given the widespread reputation of the CROCS Marks, the Panel finds that the public is likely to be confused into thinking that the Domain Name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the Domain Name is resolved. In other words, Respondent has through the use of a confusingly similar Domain Name created a likelihood of confusion with the CROCS Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the website at the Domain Name , potential partners and Internet users are led to believe that the Domain Name is either Complainant’s site or the site of official authorized partners of Complainant, which they are not. Moreover, Respondents did not respond formally to the Complaint. The Panel therefore concludes that the Domain Name was used by Respondents in bad faith.
In summary, Respondent, by choosing to register and use the Domain Name, which is confusingly similar to Complainant’s well-known CROCS Marks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the Domain Name and the conduct of Respondent as far as the website to which the Domain Name resolves is indicative of registration and use of the Domain Name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: November 15, 2011
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