1.1 The Complainants are Columbia Insurance Company of Omaha, Nebraska, United States of America; and H.H. Brown Shoe Company, Inc. of Greenwich, Connecticut, United States of America, (the “Complainants”), represented by IP Attorneys Group, United States of America.
1.2 The Respondent is Wan Zhong / Wanzhongmedia of Shen Zhen, China (the “Respondent”). 2. The Domain Name and Registrar
2.1 The disputed Domain Name is registered with EuroDNS, S.A. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the”Center") on November 21, 2012. On November 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On November 27, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2012.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on January 3, 2013. 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
4.1 The Complainants in this administrative proceeding are Columbia Insurance Company, a Nebraska corporation, having its principal place of business in United States of America and H.H. Brown Shoe Company, Inc., a Delaware corporation with its principal place of business also in the United States of America. The Complainants are said to be a leading manufacturer of footwear and said to have been operating for over 115 years. The Complainants are said to have been using the CAROLINA trademark continuously since 1963 for "boots and shoes” and are said to have obtained a U.S. Trademark Registration for the trademark CAROLINA in 1996 and in Europe in 1992. It is also stated that the Complainants registered the domain name on August 13, 1999 and use the said website to sell and advertise the Complainants' famous CAROLINA boots.
4.2 The disputed Domain Name was registered on August 29, 2000. 5. Parties’ Contentions A. Complainants
5.1 The Complainants contend that the disputed Domain Name is confusingly similar to the Complainants' trademark CAROLINA because it incorporates all elements of the Complainants' mark specifically, CAROLINA and the descriptor “boots” and the designator “.com”. The Complainants contend further that it is well established that the generic top-level domains (gTLDs) are not considered when comparing disputed domain names to marks. In this regard the Complainants rely on the case of Busy Body, Inc., v. Fitness Outlet Inc., WIPO Case No. D2000-0127 where it was held that the addition of the generic top-level domain “.com” is without legal significance since use of a gTLD is required of all domain name registrants. The Complainants also submit that the case at hand reflects similar bad faith tactics displayed in the case of Davis +Henderson, Limited partnership v. Whois Privacy Protection Service, Inc. / Demand Domains Inc.,WIPO Case No. D2008-1162 where it was found that the disputed domain name was in all likelihood registered precisely for the name and trademark of the complainant and with knowledge of the likely heavy traffic it would attract to the respondent's site. Accordingly, it is submitted that the disputed Domain Name is identical and/ or confusingly similar to the Complainants' registered trademark, CAROLINA.
5.2 The Complainants also argue that the Respondent has no rights or legitimate interests in the disputed Domain Name principally because the Respondent is not authorised by the Complainants to use the Complainants' mark CAROLINA in its domain name, nor is the Respondent commonly known by the disputed Domain Name or any term incorporated therein. The Complainants argue further that as the Respondent is using the disputed Domain Name to redirect Internet users to websites unrelated to the Complainants' trademarks, such usage is not a bona fide offering of goods and services as contemplated under the Policy. In support, the Complainants rely on the decision of Wedding C Inc., v. Vasiliev, NAF Claim No. 156716 where the respondent's use of a disputed domain name to redirect Internet users to websites unrelated to the complainant's mark, was found not to be a bona fide offering of goods and services as contemplated by the Policy. The Complainants further submit that the Respondent's usage also does not constitute a legitimate noncommercial or fair use of the disputed Domain Name as provided by the Policy at paragraph 4 (c)(iii) as found in Vapor Blast Manufacturing Company v. R & S Tech.Inc., NAF Claim No. 96577.
5.3 On the question of bad faith use and registration the Complainants assert that it is inconceivable that the registration of the disputed Domain Name was made without full knowledge of the existence of the Complainants and its trademarks and in particular the Complainants' rights in those marks as the Complainants' trademarks namely CAROLINA and CAROLINA BOOTS are globally well-known as well as being registered in the jurisdiction where the disputed Domain Name can be accessed. Secondly, the Complainants assert that the Respondent is cybersquatting and has offered to sell the disputed Domain Name at prices in excess of USD 30,000. Thirdly, the Respondent has parked the disputed Domain Name and is therefore engaged in “passive holding” as defined in the case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; where the concept of passive holding was defined to imply complete inaction on the part of a respondent by failing to direct the disputed domain name to any active website. Fourthly, the Complainants draw attention to the Respondent’s attempts to conceal its identity by registering the disputed Domain Name through a privacy service and assert that this is further evidence of bad faith. Fifthly, it is submitted that the Respondents must have had actual and or constructive notice of the Complainants' rights in the mark CAROLINA as it is well established that the WIPO, European, and U.S Patent and Trademark Offices confer constructive knowledge on anyone attempting to use a registered mark. Finally, the Complainants argue that in addition to constructive notice of Complainants' rights the Respondent's registration of the disputed Domain Name incorporating Complainants’ trade mark suggests that the Respondent had actual notice of Complainant's rights in CAROLINA further evidencing bad faith registration of the disputed Domain Name. B. Respondent
5.4 The Respondent did not reply to the Complainants’ contentions and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inference as it considers appropriate from the Respondent's default. 6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in this administrative proceedings the Complainants must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark which the Complainants have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainants must establish the existence of each of these three elements in these proceedings. A. Identical or Confusingly Similar
6.3 This Panel finds from the unchallenged facts and without any hesitation, that the disputed Domain Name registered by the Respondent on August 29, 2000 is confusingly similar to the Complainants’ well-known trademark CAROLINA and domain name registered on August 13, 1999. The Panel is satisfied from the number of trademark registration certificates exhibited to this proceedings that the Complainants own substantial federal, international and common law rights in the trademark CAROLINA which the Complainants have used in the sale and advertisement of boots and other footwear globally and over the years. In this regard the Panel finds that the disputed Domain Name incorporates all elements of the Complainants’ trademark which is CAROLINA and accepts that the mere addition of the designator “boots” and the gTLD “.com” does absolutely nothing to preclude a finding of confusing similarity. The Panel relies on the case of Busy Body, Inc. v. Fitness Outlet Inc., supra cited by the Complainants where it was stated that the addition of the gTLD is without legal significance.
6.4 The Panel is therefore satisfied that the Complainants have established that the disputed Domain Name is confusingly similar to the Complainants’ CAROLINA trademark. B. Rights or Legitimate Interests
6.5 The Panel also finds that the Respondent has failed to provide any evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. There is no evidence of any authorisation from the Complainants to the Respondent to use the Complainants’ mark in the disputed Domain Name, nor is there any evidence that the Respondent is commonly known by the disputed Domain Name or any term incorporated therein or that the Respondent is in any way affiliated to the Complainants either as vendor or retailer or indeed an authorised seller. Furthermore from the adduced evidence it is clear that the Respondent is using the disputed Domain Name to divert Internet users to the Respondent’s websites unrelated to the Complainants’ mark for the purpose of generating revenue. Such activity as held in WeddingC Inc. v. Vasiliev, supra is not a bona fide offering of goods and services nor as held in Vapor Blast Manufacturing Company v. R &S Tech., Inc., supra is it a legitimate noncommercial or fair use of the disputed Domain Name as contemplated by the Policy. Also relevant is the case of La Quinta Worldwide L.L.C. v. Watch My Domain;WIPO Case No. D2006-0623 where it was found that using a “pay per click” parking service to generate revenue because of the association of the disputed domain name with the complainant’s marks and therefore exploiting the complainant’s goodwill cannot be considered to constitute fair noncommercial use nor a bona fide offer of goods and services.
6.6 In the circumstances, the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.7 The Panel is satisfied that the Respondent registered the disputed Domain Name in bad faith and has continued to engage in bad faith use. There are quite a substantial number of factors that the Panel has taken into account in arriving at this conclusion. The most determinative of the factors are listed below as follows. In the first instance, as the Complainants assert, it is inconceivable that the Respondent registered the disputed Domain Name not being aware of the Complainants long established rights. In addition the Panel finds that all trademark registrations exhibited to the proceedings are dated prior to the Respondent’s registration of the disputed Domain Name . Accordingly, the Panel finds that the Respondent must have had actual and or constructive notice of the Complainants’ mark before deciding to register the disputed Domain Name on August 29, 2000. Secondly, the evidence from the screen shots attached to these proceedings demonstrates that the Respondent has offered the disputed Domain Name for sale at the price of USD 31,674 to be precise. Thirdly, the website at the disputed Domain Name displays the Complainants’ copyrighted pictures and advertising language and gives the impression that there is an offering of shoes for sale when it is actually not possible to buy shoes from the Respondent’s website. In the Panel’s view, the Respondent is clearly engaged in cybersquatting and has been using the disputed Domain Name to divert Internet visitors to pay per click websites to generate revenue which constitutes bad faith use.
6.8 Fourthly, the Complainants have correctly drawn attention to the Respondent’s attempt to conceal its identity by registering the disputed Domain Name through a privacy service as further evidence of bad faith. Fifthly, the Respondent’s use of the Complainants’ copyrighted materials and photographs displayed on the website must be deemed to be bad faith use of the disputed Domain Name as held in Hoffmann-La Roche Inc. v. Domain Ownership Ltd.,WIPO Case No. D2007-0891. Sixthly, as alluded to in paragraph 5.4 above, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to deny or respond to the evidence and submissions adduced by the Complainants in this proceeding. 7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainants.
Ike Ehiribe
Sole Panelist
Date: January 17, 2013
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