The Complainant is Payless ShoeSource Worldwide, Inc., of Topeka, Kansas, United States of America (“US”), represented by Wiley Rein LLP, US.
The Respondent is Shoes-store, Aleh Vydra, of Grodno, Belarus. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2014. On September 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2014, 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.
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 the Respondent of the Complaint, and the proceedings commenced on October 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 31, 2014. 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
The Complainant is the largest speciality family footwear retailer in the Western Hemisphere, founded in 1956 in Kansas, US. The Complainant has a network of stores in the US, Puerto Rico, Guam, Saipan, the US Virgin Islands, Canada, Central America, the Caribbean and South America. As of the second quarter 2012, the Complainant operated 4,107 stores in the Americas, 174 franchised stores located in the Middle East, Asia and Eastern Europe, and an online store at “”.
The Complainant began using its PAYLESS formative marks for retail shoe store services in April 1978 and now maintains almost 650 global trademark registrations for such marks across 125 jurisdictions. The Complainant is the owner of US registered trademark no. 1949546 for the word mark PAYLESS in international class 42, registered on January 16, 1996, and US registered trademark no. 1155940 for the word mark PAYLESS SHOESOURCE in international class 42, registered on May 26, 1981.
The Complainant is also the owner of international registered trademark no. 903896A, designated inter alia for Belarus, where the Respondent appears to be based, in respect of the stylized word PAYLESS in international class 35. The said mark was registered on September 18, 2006, with a priority date of April 4, 2006. The Complainant is also the owner of two Belarus registered trademarks, namely, no. 35734 in respect of the device and word mark PAYLESS SHOESOURCE, registered on April 28, 2011 with priority date of January 29, 2008 in international classes 25 and 35: and no. 35815 in respect of the word mark PAYLESS SHOESOURCE registered on May 13, 2011 with priority date of January 22, 2008 in international classes 25 and 35.
Little is known about the Respondent, other than that it appears to be an entity based in Grodno, Belarus. According to the corresponding WhoIs record, the disputed domain name was created on June 28, 2006. The website associated with the disputed domain name has the appearance of an ecommerce site but also includes “pay-per-click” (“PPC”) links to third party vendors. The said website contains repeated use of the terms “payless” and “payless shoes” in its source code. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that its PAYLESS formative marks are highly distinctive and well-known to the public in the field of footwear. The Complainant contends that the generic noun “shoes” is a term that consumers have come to associate with its mark and that this only serves to increase the connection between the disputed domain name and such mark, rendering confusing similarity inevitable. The Complainant adds that the disputed domain name is also confusingly similar to the Complainant’s PAYLESS SHOESOURCE mark as it retains the most distinctive elements thereof. The Complainant submits that the generic Top-Level Domain (“gTLD”) “.biz” in the disputed domain name does not add source-identifying significance and thus does not diminish the confusingly similar nature of the disputed domain name.
The Complainant notes that it has not authorized the Respondent to use its PAYLESS mark and states that there is no evidence to suggest that Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant adds that the Respondent has used the disputed domain name to display PPC links to several third party vendors and presumes that the Respondent is being compensated thereby. The Complainant submits that the Respondent’s use of its PAYLESS mark in connection with a website that also appears to offer shoes from other manufacturers for sale, without the Complainant’s authorization, does not create a legitimate right or interest in the disputed domain name. The Complainant asserts that the only conceivable purpose of the Respondent’s use of the disputed domain name is to trade upon the goodwill associated with the Complainant’s marks. The Complainant contends that the Respondent is not commonly known as the disputed domain name and notes that the Respondent’s name does not appear within the disputed domain name or anywhere on the associated website. The Complainant states that there is no legitimate connection between the disputed domain name and the Respondent.
The Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant details the use of the website associated with the disputed domain name and submits that the purpose of obtaining PPC revenue or other commission based upon the distinctiveness of the Complainant’s PAYLESS mark, in association with footwear, cannot constitute legitimate noncommercial or fair use under the Policy.
The Complainant asserts that by using the disputed domain name containing the Complainant’s PAYLESS mark in association with footwear, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website. The Complainant contends that the Respondent is taking advantage of the Complainant’s PAYLESS mark to attract traffic to its own website, which includes links to third party websites selling footwear similar to that sold on the Complainant’s principal website. The Complainant asserts that the Respondent’s selection of the PAYLESS mark would lead to an inference that the Respondent knew or ought to have known of the existence of the Complainant’s trademark rights.
The Complainant submits that the Respondent’s repeated use of the PAYLESS mark in its website source code evidences the Respondent’s bad faith. The Complainant notes that such use is designed to increase the Respondent’s search engine rankings and adds that the Respondent has achieved the sixth placing in the “Bing” search engine’s results on a search for “payless shoes”. The Complainant asserts that such use of its mark could not have been for any reason but to intentionally misappropriate its value and recognition.
The Complainant states that the Respondent is engaged in a pattern and practice of registering domain names involving third party trademarks and is using the relevant domain names in bad faith, citing the domain names and and the corresponding ADIDAS and SKECHERS trademarks. The Complainant notes that the domain name is linked to a website configured with additional PPC links. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the submissions and evidence put forward by the Complainant, the Panel is satisfied that the Complainant has rights in its trademarks PAYLESS and PAYLESS SHOESOURCE. Disregarding the generic Top-Level Domain (“gTLD”) “.biz” as is typically customary in cases under the Policy, the Panel notes that the disputed domain name adds the generic word “shoes” to the Complainant’s PAYLESS mark together with a hyphen. It is well established via numerous decisions under the Policy that adding a descriptive or generic word to a trademark in a domain name does not prevent the domain name from creating a likelihood of confusion, and likewise that the addition of a hyphen is of no distinguishing significance. In the present case, the Panel determines that the Complainant’s PAYLESS trademark is the dominant part of the disputed domain name and that the addition of the generic word “shoes” exacerbates the potential for confusion with that trademark, given that it denotes the products retailed by the Complainant.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before 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; or
(ii) you (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; or
(iii) you 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Panel is satisfied that the Complainant has established the requisite prima facie case based upon its submissions that no authority has been given to the Respondent to use the Complainant’s PAYLESS trademark, that there is no evidence that the Respondent is commonly known by the disputed domain name or is making a bona fide offering of goods or services thereby, and that on the contrary, the Respondent is using the disputed domain name in connection with PPC links to the Complainant’s competitors which cannot constitute rights or legitimate interests in the disputed domain name.
The Complainant’s case that the Respondent registered the disputed domain name knowing of the existence of the Complainant’s rights and with the intention of deriving an unfair commercial benefit on the back of the Complainant's reputation and goodwill appears to the Panel to be made out on the present record. In particular, the Panel notes that the disputed domain name has been used for a website which offers shoes made by the Complainant’s competitors for sale and which also features PPC links.
The Respondent has not responded to the Complaint and has not provided any rebuttal of the Complainant’s prima facie case. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In the present case, the Panel considers that the Complainant’s submissions and evidence relative to paragraph 4(b)(iv) of the Policy are well-founded. The Panel is satisfied that the Respondent had the Complainant and its rights in mind when creating the disputed domain name. Furthermore, the repeated use of the Complainant’s PAYLESS trademark in the source code of the website associated with the disputed domain name, together with use of website content featuring third party branded shoes and PPC links, indicates to the Panel’s satisfaction that the Respondent intentionally set out to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark.
In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 7. Decision
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 Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: November 14, 2014
Full & Egal Universal Law Academy