Complainant is Crocs, Inc. of Niwot, Colorado, United States of America (“USA”), represented by Kestenberg Siegal Lipkus LLP, Canada.
Respondent is David Swinson of Lancaster, Pennsylvania, USA. 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 October 28, 2014. On October 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 29, 2014, the Registrar 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 October 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 21, 2014.
The Center appointed Richard W. Page as the sole panelist in this matter on November 28, 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
Complainant is a company incorporated pursuant to the laws of the State of Delaware, USA whose principal place of business is 7477 East Dry Creek Parkway, Niwot, Colorado. Complainant has registered trademarks in the USA and Canada for its CROCS trademarks in connection with footwear and other merchandise and also has a long list of additional jurisdictions in which it has pending applications for trademark registrations (the “CROCS Mark”).
Complainant has been engaged in the manufacture and distribution of footwear and related merchandise, all in association with the CROCS Mark or other Crocs Intellectual Properties since at least as early as 2002.
Respondent registered the Disputed Domain Name in November, 2013. 5. Parties’ Contentions A. Complainant
Complainant alleges that, especially in the USA, it has used the CROCS Mark since as early as 2002. As a result of such use, customers in the USA and worldwide have come to associate the CROCS Mark with Complainant’s innovative, high quality, comfortable products.
Complainant alleges that the registration of a federal (USA or Canadian) trademark is prima facie evidence of the validity of the registered name, of Complainant’s ownership of the CROCS Mark and of the Complainant’s exclusive right to use the CROCS Mark. Complainant further alleges that all of its registrations were secured well before Respondent registered the Disputed Domain Name in November, 2013.
Complainant contends that it promotes the CROCS Mark on shoes, apparel, and other good and distributes its products in over 600 store locations in 90 countries worldwide. Over 200 million pairs of shoes have been sold using the CROCS Mark. Complainant also owns a number of domain name registrations which wholly incorporate Complainant’s CROCS Mark, including, but not limited to: (1) , (2) , (3) , (4) , (5) and (6) . Since their registration, Complainant has used and continues to use these domain names in connection with its various websites, which provide information about Complainant and its product and services, as well as offering its products for sale.
Complainant further contends that it has used the CROCS Mark continuously since at least as early as 2002 in connection with the advertising, offering for sale of its various products in the USA and elsewhere. Complainant’s use of the CROCS Mark has resulted in millions of customers worldwide. These numbers clearly show the commercial strength of the CROCS Mark, which has been used prominently, continuously and substantially exclusively in connection with Complainant.
Complainant further contends that the CROCS Mark is well known and famous and has been for many years. Over these years, Complainant has expended millions of dollars in advertising and promoting its products under the CROCS Mark in a variety of media throughout the world, including print and television.
Complainant also advertised its CROCS Mark through the Internet, including on the websites associated with its domain names referenced above. Such advertising reaches a vast range of consumers: by way of example since Complainant first launched its “www.” website, it has received millions of visitors seeking information about Complainant’s products. Complainant promotes the CROCS Mark on shoe apparel and other goods and distributes its products in 600 store locations in 90 countries worldwide. Over 200 million pairs of shoes have been sold using the CROCS Mark.
Complainant alleges Respondent’s Disputed Domain Name includes the entirety of the CROCS Mark. Complainant further contends that the addition of “home” to the Disputed Domain Name is not distinctive. Complainant also argues that the addition of a generic Top-Level Domain (“gTLD”) such as “.com” is a nondistinguishing factor.
Complainant contends that the only reason for registration of the Disputed Domain Name was for the purpose of taking advantage of Complainant’s famous CROCS Mark. As such, the Disputed Domain Name is confusingly similar to the CROCS Mark and domain name. Respondent’s use of the Disputed Domain Name, including reference on the site to the CROCS Mark and related products, fosters confusion with consumers searching for information related to the CROCS Mark.
Complainant’s first use and first registration of it CROCS Mark predate any use by Respondent of the Disputed Domain Name. The Disputed Domain Name was registered in 2013, more than 10 years after Complainant first used its CROCS Mark. Complainant alleges that Respondent was aware of Complainant’s CROCS Mark, domain names and websites before it registered the Disputed Doman Name. At the time Respondent registered the Disputed Domain Name, Complainant had registered its CROCS Mark. Therefore, Respondent has no rights or legitimate interests, in the Disputed Doman Name.
Complainant contents that Respondent also has no rights or legitimate interests in the Disputed Domain name because Respondent is not using or preparing to use the Disputed Domain Name in connection with the bona fide offer of goods or services or a legitimate noncommercial or fair use. Respondent’s only use of the website to which the Disputed Domain Name resolves is to sell counterfeit goods or products related to the CROCS Mark or unlicensed goods or products actually manufactured by Complainant. Complainant has not authorized or licensed Respondent to manufacture, sell or offer for sale Complainant’s merchandise, through the Disputed Domain Name or otherwise. Complainant notes that Respondent is not now, or has ever been, commonly known by the name “Crocs.”
Complainant argues that Respondent registered and is using the Disputed Domain Name in bad faith. Complainant contends that Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website which is maintained by Respondent and where Respondent obtains commercial benefit.
Complainant further argues that Respondent is actively using and has at all time used such website or other online location to intentionally misdirect and attract for commercial gain Internet users searching for Complainant’s authorized goods and services by creating a likelihood of confusion to the source, sponsorship, affiliation or endorsement of Respondent’s website. Complainant concludes that the activities of Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy, defining one on the nonexclusive categories of bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the CROCS Mark, that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the CROCS Mark. Complainant further alleges that its registrations are incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated goods.
UDRP Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Respondent has not contested the assertions by Complainant that it has valid trademark registrations of the CROCS Mark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the CROCS Mark.
Complainant further contends that the Disputed Domain Name is identical with or confusingly similar to the CROCS Mark pursuant to the Policy paragraph 4(a)(i).
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) Quixar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253
The addition of other nondistinctive terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark. The Panel finds that the addition of “home” and the gTLD “.com” are not distinctive.
Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the CROCS Mark. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the CROCS Mark pursuant to the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Respondent has no relationship with or permission from Complainant for the use of the CROCS Mark.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(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 Complainant has sustained its burden of making a prima facie showing that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has not contested Complainant’s contentions and the file contains no evidence that the use of the Disputed Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Further, because the website at the Disputed Domain Name does not contain an accurate and prominent disclaimer of Respondent’s relationship with Complainant, the panel finds that the unauthorized use of the Disputed Domain Name to resell Complainant’s products does not constitute a bona fide offering of goods and services. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names. Complainant alleges violation of paragraph 4(b)(iv) of the Policy which states:
(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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
The Panel found above that the Disputed Domain Name is confusingly similar to the CROCS Mark pursuant to the Policy paragraph 4(a)(i). As discussed above, the panel notes that the website at the Disputed Domain Name resolves to a websites selling Complainant’s products or counterfeit products. Accordingly, the Panel additionally finds that Complainant’s evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).
Based upon this evidence, the Panel finds that Respondent registered and is using the Disputed Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii). 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 Complainant.
Richard W. Page
Sole Panelist
Date: December 14, 2014
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