The Complainant is Crocs Inc. of Niwot, Connecticut, United States of America ("US"), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Privacy Protection Service Inc. d/b/a PrivacyP of Queensland, Australia / Nifa Syahira of Bekasi, Jawa Barat, Indonesia. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (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 Domain Name. On October 30, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 30, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 31, 2014.
The Center verified that the Complaint together with the amended 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 November 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2014.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on November 27, 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 following facts are not contested.
The Complainant owns numerous United States Trademark Registrations for its CROCS marks.
Among other trademarks, the Complainant has rights in the United States Trademark (word mark) CROCS with registration number 3836415, filed on May 27, 2003, registered on August 24, 2010, inter alia, for lightweight slip-resistant footwear (the "Trademark").
The Domain Name was registered on December 28, 2011. 5. Parties' Contentions A. Complainant
Insofar as relevant, the Complainant contends the following.
The Complainant has been engaged in the manufacture and distribution of footwear, including, most notably, plastic footwear, apparel and related accessories. The Complainant has used and registered several of its trademarks in the United States and throughout the world.
The Complainant has used its CROCS trademark since 2002.
The Complainant promotes the Trademark on shoes, apparel, and other goods and distributes its products in over 600 store locations and in 90 countries worldwide. Over 200 million pairs of shoes have been sold using the Trademark. The Complainant also owns a number of domain name registrations which wholly incorporate the Trademark, including, but not limited to , , , , and .
The Trademark is well known and famous and has been for many years. Over these years, the Complainant has spent millions of US dollars in advertising and promoting.
The Domain Name incorporates the Trademark in its entirety. The Respondent is offering goods bearing the Complainant's intellectual properties. The addition of the term "lovers" does not distinguish the Domain Name from the Trademark. If anything, it adds to the confusion since the merchandise offered on the Respondent's website (shoes and other products) bear unauthorized reproductions of the Trademark. Although the Respondent is attempting to create the façade of a "fan site", the website is actually a web shop, as evidenced by the price listing on some of the shoes, contact information where to purchase the items and the designation of an online shop at the bottom of the website.
The Respondent's registration and use of the Domain name was done solely for the purpose of taking advantage of the Complainant's famous Trademark.
The Respondent also has no proprietary rights or legitimate interests in "Crocs" or the Domain Name because the Respondent is not using or preparing 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 a legitimate noncommercial or fair use. A review of the website to which the Domain Name resolves reveals that it prominently displays the Trademark, and is selling counterfeit merchandise and other products bearing the Trademark. The Complainant has not authorized or licensed the Respondent to manufacture, sell or offer for sale such merchandise, through the Domain Name.
The Respondent registered and is using the Domain Name in bad faith. The Respondent is diverting the Complainant's customers or potential customers seeking information about the Complainant to the website to which the Domain Name resolves, where the Respondent presumably obtains commercial benefits through the sale of products bearing the Trademark. This constitutes registration and use in bad faith.
Further, the Respondent is actively using, and has at all times used, such website or other online location to intentionally misdirect and attract for commercial gain Internet users searching for the Complainant's authorized goods and services by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location.
Given the fame of the Trademark and the fact that the Respondent is using the Domain Name to sell counterfeit merchandise bearing the Trademark, it is clear that the Respondent had knowledge of the Trademark when it registered the Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name registered by the Respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Domain Name contains the Trademark in its entirety. The addition of the descriptive term "lovers" does not distinguish the Domain Name from the Trademark. Therefore, the Domain Name is confusingly similar to the Trademark in which the Complainant has rights.
For the foregoing reason, the Panel finds that the Complainant has satisfied the first element. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that "Crocs Lovers" is the Respondent's name or that the Respondent is commonly known as "Crocs Lovers". There is also no evidence that the Respondent is, and has ever been, a licensee of the Complainant and that the Respondent has ever asked, and has ever been permitted in any way by the Complainant to register or use the Complainant's marks, or to apply for or use any domain name incorporating any of the marks. In any event, the website to which the Domain Name resolves does not accurately and prominently disclose the Respondent's relationship with the Complainant.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. In particular, the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services as the Respondent is using the Domain Name for the sole purpose of misleading Internet users and to offer purportedly counterfeit merchandise in relation to the CROSS trademark and other trademarks.
For the same reason, it is also clear to the Panel that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
Finally, given the circumstances of this case, the Panel finds that the Respondent's lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions "non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights" (see Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant's trademarks and activities are well known throughout the world. Accordingly, in the Panel's view, the Respondent must have been aware of the Complainant's existence and rights when it registered the Domain Name. This is emphasized by the fact that the website to which the Domain Name resolves, reveals that it prominently displays the Trademark, and is selling allegedly counterfeit merchandise and other
products bearing the Trademark or of the Complainant's competitors.
This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e. that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the 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.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith. 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 Domain Name be transferred to the Complainant.
Willem J. H. Leppink
Sole Panelist
Date: December 4, 2014
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