The Complainant is KEEN, Inc. of Portland, Oregon, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondents are yan cifang, lin guilan of Fujian, China; zhou yongfa, of Guangdong, China; chen lifen of Yunan, China; he jiyun of Anhui, China; jiang yaoxia of "Jinlin", China; yin nana, ma liping of Sichuan, China; jiong xing of Shanghai, China; liu xiaofeng of Yunan, China; duan kangjun of Hunan, China; fu yan of Chongqing, China; lin hongqiu, zhou liwei of Guangxi, China; liu fei of Henan, China; liao qing of Yunan, China; lin xiaohua of Guangdong, China; gou surong of Sichuan, China and fu hongfei of "Jinlin", China. 2. The Domain Names and Registrars
The disputed domain names and are registered with Beijing Innovative Linkage Technology Ltd. dba ; , , , , , , and are registered with B, Inc.; , , , and are registered with HiChina Zhicheng Technology Ltd.; , , , , , , and are registered with Shanghai Yovole Networks, Inc. (the above mentioned Registrars are hereinafter referred to as the "Registrars"). 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 names. On October 4, 8, 9 and 14, 2014, the Registrars transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. On October 23, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On October 24, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date.
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 Respondents of the Complaint in both Chinese and English, and the proceeding commenced on October 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on November 20, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on December 2, 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 has been in the business of manufacturing and selling footwear, bags and clothing throughout the world since 2003 and its products are available on and in more than 5,000 authorized online retailer websites and brick-and-mortar locations in more than 70 countries.
In March 2003, the Complainant began using the word mark KEEN on footwear and expanded use of the mark to bags in 2007 and to clothing in 2013. The Complainant is the owner of an extensive number of trademark applications and registrations worldwide that consist of or include the mark KEEN.
The Complainant is also the registrant of the domain name , which was created on April 9, 2003, and includes versions in Canada, Austria, Belgium, Denmark, France, Germany, Ireland, Italy, Luxembourg, the Netherlands, Spain and the United Kingdom of Great Britain and Northern Ireland, as well as related websites registered to the Complainant's authorized agents in Australia, Czech Republic, Republic of Korea, New Zealand, Poland, Russian Federation and Sweden. The Complainant's official websites use this domain name and iterations of this domain name in various Top-Level Domains throughout the world, and the Complainant offers for sale through these authorized websites, and others, various products, including footwear, clothing, socks and bags.
The Respondents registered the disputed domain names from September 3, 2013, through April 3, 2014. 5. Parties' Contentions A. Complainant
The Complainant makes the following arguments on the issue of consolidation of proceedings for multiple domain names:
I. According to the Registrars' WhoIs databases, the Respondents in this administrative proceeding are known as gou surong, yan cifang, lin guilan, zhou yongfa, chen lifen, he jiyun, jiang yaoxia, yin nana, ma liping, fu hongfei, xing jiong, liu xiaofeng, duan kangjun, fu yan, lin hongqiu, zhou liwei, liu fei, liao qing, lin xiaohua.
II. the Complainant believes that each of the names for the registrants of the 23 disputed domain names is an alias for a single person or entity (and, therefore, the same "holder of a domain-name registration" – the definition of "respondent" as set forth in the Rules), based upon the following:
a. The email addresses associated with 21 of the disputed domain names (all except for and ) are identical (…@), and the registrant of the other two domain names (that is and ) is identified in the WhoIs records as "gou surong," which is the same registrant as for the disputed domain name (which uses the email address …@) – plus, identical phone numbers in the WhoIs records for the disputed domain names and are the same as for the disputed domain name ;
b. The websites associated with most of the disputed domain names have all been used in connection with the sale of counterfeit footwear products infringing on the Complainant's KEEN marks.
c. Many of the websites at the disputed domain names have a common (and, in some cases, nearly identical) look and feel;
d. Each of the disputed domain names contains the Complainant's KEEN marks plus one or more generic or descriptive words;
e. Each of the disputed domain names was registered with one of four Chinese Registrars;
f. The disputed domain names were registered within a relatively short period of time of each other (and some of them were registered on the exact same dates); and
g. Many of the disputed domain names are using the same nameservers as other of the disputed domain names.
h. An investigative services report from the Complainant's registrar, MarkMonitor (a global leader in online brand protection) concluded that the registrant of all 23 disputed domain names is the same entity.
III. Based on the above reasons, the Complainant contends that it is appropriate for the Panel to consider each of the named registrants as aliases for a single person or entity. Alternatively, it is appropriate in this case to allow a single proceeding under the Policy against multiple respondents.
As for the substantive elements required under the UDRP, the Complainant makes the following arguments:
I. The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The reasons are summarized as follows:
a. Each of the disputed domain names contains the KEEN marks in their entirety plus generic or descriptive words.
b. Many of the additional words in the disputed domain names – such as "buy", "discount", "cheap", "outlet", "sale", "online", "in", "england", "new", "us", "classic", "for", "offer", "uk" and "retail" – do nothing to distinguish the disputed domain names from the KEEN marks and their related goodwill in the services and products. On the contrary, the inclusion of some of these words – such as "shoes" and "fashion" – actually may increase the confusing similarity given that these words are directly related to the goods associated with the KEEN marks.
c. The overall impression of the designation of each of the disputed domain names is one of being connected to the trademark of the Complainant.
II. The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names on the following grounds:
a. The Respondents have no rights or legitimate interests in any of the disputed domain names. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondents to register or use the KEEN marks in any manner.
b. Upon information and belief, the Respondents have never used, or made preparations to use, the disputed domain names or any name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. Instead, the Respondents are using most of the disputed domain names in connection with websites that offer for sale counterfeit footwear associated with the KEEN marks.
c. Such use of the disputed domain names by the Respondents is clearly not bona fide, noncommercial or not misleading under the Policy and, therefore, does not confer upon the Respondents any rights or legitimate interests under paragraph 4(c)(i) or 4(c)(iii) of the Policy.
c. To the Complainant's knowledge, the Respondents have never been commonly known by any of the disputed domain names and have never acquired any trademark or service mark rights in the disputed domain names. Therefore, the Respondents cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy. Specifically, according to the WhoIs records, the registrants of the disputed domain names are "gou surong," "yan cifang," "lin guilan," "zhou yongfa," "chen lifen," "he jiyun," "jiang yaoxia," "yin nana," "ma liping," "fu hongfei," "xing jiong," "liu xiaofeng," "duan kangjun," "fu yan," "lin hongqiu," "zhou liwei," "liu fei" or "liao qing," "lin xiaohua" – not "keen" or anything containing or similar to "keen."
d. Given the Complainant's established registrations of the KEEN marks throughout the world, some for more than 10 years, it is unlikely that the Respondents are commonly known by these trademarks.
e. The Respondents are not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant's KEEN marks. Instead the Respondents are using most the disputed domain names in connection with websites that offer for sale counterfeit footwear associated with the KEEN marks. Such websites offering goods for sale are for commercial gain, in violation of paragraph 4(c)(iii) of the Policy.
f. To the extent that the Respondents may consider themselves to be resellers of the Complainant's products (which the Respondents are not authorized by the Complainant to do), the Respondents nevertheless lack rights or legitimate interests with respect to the disputed domain names. Furthermore, it should be noted that the Respondents fail to meet at least two of these requirements because (a) the Respondents' websites do not actually offer the goods and services at issue because the goods sold by the Respondents are counterfeit versions of the Complainant's KEEN-branded footwear; and (b) the Respondents' websites fail to disclose that they are not associated with the Complainant.
g. Even if the Respondents are not using – or may have temporarily stopped using – some of the disputed domain names in connection with an active website, the Respondents nevertheless do not have any rights or legitimate interests.
h. With respect to those of the disputed domain names that are being used in connection with monetized parking pages that include generic links or links related to the Complainant's goods and services: such use of the disputed domain names in connection with competitive services is not a bona fide offering of goods or services under the Policy – and, therefore, the Respondents cannot demonstrate rights or legitimate interests under paragraph 4(c)(i) of the Policy.
i. By using one of the disputed domain names () in connection with a website that sells Nike-branded footwear competitive with the Complainant, the Respondents fail to establish any rights or legitimate interests.
III. The Complainant contends that the disputed domain names were registered and are being used in bad faith on the following grounds:
a. The Respondents are using the disputed domain names in connection with websites that offer for sale counterfeit footwear associated with the KEEN marks, and the websites are using the KEEN marks without authorization, falsely indicating that they are somehow affiliated, connected or associated with the Complainant.
b. Most of the websites associated with the disputed domain names use the KEEN mark, despite the absence of any license or permission from the Complainant to do so. By including the KEEN marks, the Respondents have only increased the likelihood of confusion between its websites and the Complainant.
c. By using the disputed domain names in connection with websites selling counterfeit footwear, the Respondents intentionally use the disputed domain names, aiming to profit from the Complainant's renowned trademark by attracting Internet users. The confusion created by the disputed domain names makes potential customers to choose other services than the Complainant's, disrupting the Complainant's business.
d. The Respondent have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor, in violation of paragraph 4(b)(iii) of the Policy. The Respondents are using most of the disputed domain names in connection with websites that offer for sale counterfeit footwear associated with the KEEN marks. Accordingly, the Respondents are competitors of the Complainant because, like the Complainant, the Respondents are selling footwear. By selling these services under the Complainant's trademark (without permission), the Respondents are clearly disrupting the Complainant's business.
e. Even with respect to those of the disputed domain names that appear not to be used in connection with active websites, "passive holding" of a domain name can constitute use in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
f. With respect to those of the disputed domain names that are being used in connection with monetized parking pages, this constitutes bad faith as set forth in paragraph 4(b)(iv) of the Policy.
g. Further, the Respondents have acted in bad faith by using one of the disputed domain names () in connection with a website that sells Nike-branded footwear competitive with the Complainant.
h. A further indication of bad faith under the Policy is the fact that the Complainant's KEEN marks pre-date the Respondents' registration of the disputed domain names, some by more than 10 years and, therefore, the Respondents knew or should have known of the KEEN marks.
i. In light of the widespread use and protection of the KEEN marks, some for more than 10 years, it is inconceivable that the Respondents chose the contested domain names without knowledge of the Complainant's activities and the name and trademark under which the Complainant is doing business. Additionally, the Respondents have acted in bad faith under paragraph 4(b)(ii) of the Policy because they registered the disputed domain names to prevent the Complainant from reflecting its trademarks in a corresponding domain name and has engaged in a pattern of such conduct. The Complainant is prevented from registering any of the disputed domain names, and the fact that this Complaint includes 23 disputed domain names indicates a "pattern" of conduct by the Respondents.
j. To the extent that the Respondents may have temporarily stopped using any of the disputed domain names, bad faith still exists pursuant to the well-established "passive holding" doctrine set forth in the often-cited decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Consolidation of Multiple Respondents
Previous UDRP panels have articulated principles governing the question of whether a UDRP complaint may be brought against multiple respondents. These criteria encompass situations in which (i) the domain names or the websites to which the domain names resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16. Common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and share postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Policy. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281.
The Panel notes that the evidence put forth by the Complainant substantiating the contention that each of the names for the registrants of the 23 disputed domain names is an alias for a single person or entity. In the circumstances, the Panel finds that the Complainant has established that the disputed domain names are subject to common control and that such common control is sufficient to justify consolidation of the Complainant's claims against the Respondents (hereinafter "the Respondent"). The Panel further finds in the circumstances of this case that consolidation would be equitable to all the parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. 6.2. Language of the Proceeding
According to the information received by the Center from the Registrars, the language of the Registration Agreements for the disputed domain names is Chinese. 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 in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English. The Respondent did not respond.
After considering the circumstances of the present case and the submissions from the Complainant, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel's discretion under the Policy
Paragraph 11 of the Rules provides:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that:
(a) the disputed domain names are made up of letters in Ascii-Script and could be pronounced phonetically in English;
(b) there is evidence adduced by the Complainant that the disputed domain names are used in connection with websites in the English language which indicates that the Respondent is conversant with the English language;
(c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant's allegations.
Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.3. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the 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 Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the KEEN marks in connection with footwear, bags and clothing. The Panel finds that the Complainant's KEEN marks are widely-known for clothes and other fashion items offered by the Complainant.
In assessing the degree of similarity between the Complainant's trademarks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trademarks and the disputed domain names is to be considered from the perspective of the average Internet user seeking to purchase or download information about the Complainant's products.
The disputed domain names incorporate in the entirety the Complainant's registered KEEN marks with the addition of generic or descriptive words and generic Top-Level Domains ("gTLD") such as ".com". The Panel is of the view that the most prominent and distinctive part of the disputed domain names is the word "keen" which is identical to the Complainant's registered trademark KEEN. Given the substantial reputation of the Complainant's KEEN marks, the addition of generic or descriptive words such as "buy", "discount", "cheap", "outlet", "sale", "online", "in", "england", "new", "us", "classic", "for", "offer", "uk" and "retail" does not provide sufficient distinction from the Complainant's trademark. On the contrary, the Panel agrees with the Complainant that the addition of words such as "buy", "discount", "cheap", "outlet", "sale", "online", "in", "england", "new", "us", "classic", "for", "offer", "uk" and "retail" may serve to heighten consumer confusion as it relates to products usually sold by the Complainant and for which the KEEN marks are used on. Furthermore, it is also an accepted principle that the addition of suffixes such as ".com" being the gTLD is not a distinguishing factor.
Bearing in mind the widespread reputation and high degree of recognition of the Complainant's KEEN marks and the lack of distinguishing factors between the disputed domain names and the Complainant's marks, the Panel therefore finds that the disputed domain names are identical or confusingly similar to the KEEN marks in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:
1. The Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the term "keen" in its business operations;
2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the KEEN marks;
3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services;
4. On the contrary, the Respondent is using most of the disputed domain names in connection with websites that offer for sale purportedly counterfeit footwear associated with the KEEN marks whilst other disputed domain names are used in connection with monetized parking pages that include generic links or links related to the Complainant's goods and services or in connection with a website that sells Nike-branded footwear competitive with the Complainant. The Panel finds that the Respondent therefore does not have the right to use KEEN marks in the disputed domain names. Such behaviour on the part of the Respondent clearly shows that it is not using the disputed domain names in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain names.
5. The Complainant and its KEEN marks enjoy a substantial reputation and a high degree of recognition in connection with footwear, bags and clothing and is a registered trademark in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the KEEN marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP 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. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.) Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interests in the disputed domain names. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights to or legitimate interests in the disputed domain names.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent has not adduced evidence of any rights to or legitimate interests in the disputed domain names.
The Panel finds for the Complainant on the second part of the test. 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 a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) A 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 the respondent has engaged in a pattern of such conduct; or
(iii) A respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The above circumstances are indicative of registration and use of the disputed domain names in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel's assessment of whether the Respondent has registered and used the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the substantial reputation of the Complainant and its KEEN marks, as well as the market presence of the Complainant in numerous countries both online and offline, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain names.
Furthermore, the Complainant has established a substantial presence on the Internet through the registration of several domain names. A simple search on the Internet would reveal the presence of the Complainant's trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain names. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with intent to create an impression of association with the Complainant and its products.
Where the Respondent has chosen to register disputed domain names that are identical or confusingly similar to the Complainant's trademark and where the trademark in question has through substantial use acquired a substantial reputation, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain names were made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain names for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent is using most of the disputed domain names in connection with websites that offer for sale allegedly counterfeit footwear associated with the KEEN marks whilst other disputed domain names are used in connection with monetized parking pages that include generic links or links related to the Complainant's goods and services or in connection with a website that sells Nike-branded footwear competitive with the Complainant.
The Respondent is not an authorized agent and does not adequately disclose its relationship with the Complainant on the websites associated with the disputed domain names. The Panel finds that the Respondent therefore does not have the right to use KEEN marks in the disputed domain names. Such conduct on the part of the Respondent is indicative of bad faith registration and use. The Respondent could have explained its choice of the disputed domain names and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that given the substantial reputation of the Complainant's KEEN marks and a lack of plausible explanation for the choice of incorporating the Complainant's well known trademark in the disputed domain names, the conduct of the Respondent whether in using the disputed domain names to purportedly sell the Complainant's goods without authorisation or in connection with monetized parking pages that include generic links or links related to the Complainant's goods and services or in connection with a website that sells Nike-branded footwear competitive with the Complainant, are all relevant factors indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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 names, , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Date: December 16, 2014
Full & Egal Universal Law Academy