Complainant is C & J Clark International Limited of Somerset, United Kingdom of Great Britain and Northern Ireland, represented by Squire Patton Boggs (UK) LLP, United Kingdom.
Respondent is Friendly Booking - Tran Ngoc Dat of Ho Chi Minh HCMC, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 23, 2015. On July 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2015, 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 Respondent of the Complaint, and the proceedings commenced on August 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 24, 2015.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on September 11, 2015. 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 the well-known British purveyor of Clarks shoes, and it holds many trademark registrations around the world for its CLARKS mark, dating back to 1987.
Respondent registered the disputed domain name on August 22, 2013, and uses it to sell goods in competition with Complainant. 5. Parties' Contentions A. Complainant
1. Respondent's disputed domain name is confusingly similar to Complainant's CLARKS mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain name .
3. Respondent registered and uses the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). A. Identical or Confusingly Similar
Complainant has provided proof of numerous trademark registrations around the world for its widely known CLARKS mark. The Panel finds that registration with various trademark authorities is sufficient to establish rights in the mark for purposes of Policy paragraph 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) ("Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.").
Respondent's disputed domain name incorporates Complainant mark, adding only the descriptive word "shoes" and the generic Top-Level Domain ("gTLD") ".info." The addition of a gTLD does not distinguish a domain name from a mark. SeeArthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698(finding that the suffix ".com" is of no significance). Prior UDRP panels have also found that adding a common word such as "shoes" to a domain name does not eliminate confusing similarity, particularly when it is descriptive of Complainant's business. SeeSegway LLC v. Chris Hoffman,WIPO Case No. D2005-0023 (finding the respondent's domain name confusingly similar to complainant's SEGWAY mark because the "The addition of a generic term such as "accessories" is insufficient to avoid confusion."). Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant's CLARKS mark.
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy, paragraph 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Accor v. Eren Atesmen,WIPO Case No. D2009-0701 (holding that "A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent").
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name , and is not commonly known by the disputed domain name. Complainant states that Respondent is not affiliated with Complainant or licensed to use its CLARKS mark. The WhoIs information lists "Friendly Booking - Tran Ngoc Dat" as the registrant of the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name pursuant to Policy 4(c)(ii). See Video Images, LLC v. Stoebner, Jeff,WIPO Case No. D2004-0887 (concluding that "Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name or that the Respondent has used VIDEO IMAGES as a mark. Given the foregoing, the Panel finds that the Complainant has made a prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain name").
Complainant also argues that Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Complainant provides evidence that Respondent uses the disputed domain name to offer shoes in competition with Complainant, through which Respondent no doubt receives fees. Past UDRP panels have found that there is no bona fide offering of goods or services or a legitimate noncommercial or fair use when the website resolving from the disputed domain name links to products that compete directly with a complainant's business. Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Respondent uses the domain name to divert Internet users to its website for commercial gain. Past UDRP panels have found bad faith registration and use pursuant to Policy 4(b)(iv) where a respondent's domain name resolved to a website competing with complainant for commercial gain. See MathF, LLC v. Weiguang Huang,WIPO Case No. D2000-0743 (finding bad faith under Policy 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant's mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).Accordingly, the Panel finds bad faith under Policy 4(b)(iv).
Complainant argues that Respondent had actual knowledge of Complainant's mark at the time of the registration of the disputed domain name, pointing to the addition of the word "shoes" to its CLARKS mark. The Panel agrees, noting the use of the disputed domain name to purportedly sell the widely known CLARKS brand of shoes. Thus, the Panel finds that Respondent had actual knowledge of Complainant's mark, and registered the disputed domain name in bad faith under Policy 4(a)(iii). SeeDIRECTV, LLC v. Moniker Privacy Services / Mongol Post, WIPO Case D2014-1319 (finding bad faith where "[…] the website of the disputed domain name includes links to "DIRECTV Internet", "DIRECTV Satellite TV", "Cable TV Service Providers", "Satellite TV Companies" and "Cable TV packages", etc., the Panel finds that the Respondent had actual knowledge of the fame of the Complainant's trademark when acquiring the disputed domain name").
The Panel finds that Complainant has satisfied 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 the Complainant.
Sandra J. Franklin
Sole Panelist
Date: September 20, 2015
Full & Egal Universal Law Academy