The Complainant is Crocs, Inc. of Niwot, Colorado, United States of America, represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Domain Hostmaster, Customer ID: 99450997824265, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2016. On September 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 22, 2016 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 22, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 28, 2016. In accordance with the Rules paragraph 5, the due date for Response was October 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 19, 2016.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on October 28, 2016. 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
According to the Complaint and its annexes the Complainant is an enterprise engaged in the manufacture and distribution of footwear and other apparel, with more than 500 store locations in 90 countries. The Complainant owns registered trademarks for CROCS in Canada and the United States; the registrations for which date from October 26, 2006 for Canada and from August 24, 2010 and October 23, 2012 for the two evidenced United States registrations.
It appears that the Complainant has engaged in significant advertising and promotion of its CROCS trademarks, including on the Internet and other media. The Complainant submits evidence to the effect that more that 200 million pairs of shoes have been sold using the CROCS trademarks.
The disputed domain name was registered on January 16, 2006. The Respondent's identity was shielded by a privacy service at the time of filing the Complaint, but the Registrar disclosed the underlying registrant as being Lisa Katz, Domain Protection LLC. 5. Parties' Contentions A. Complainant
The Complainant asserts that it has continuously and exclusively used the CROCS trademark since at least 2002 in the promotion and sale of its products and that the CROCS trademark is famous and associated with its products since well before 2006, with the result that the Complainant acquired common law rights prior to 2006 when the disputed domain name was registered.
The Complainant further alleges that the disputed domain name contains the entirety of the Complainant's trademark; that it has never given any genre of permission to the Respondent or others to use the Complainant's trademarks in the disputed domain name, and that the disputed domain name can only have been registered and used in bad faith.
The Complainant accordingly requests that the disputed domain name be transferred to it.
The Complainant's arguments and assertions are discussed further as necessary in Section 6, below. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
In order to prevail on the first element which is contained in paragraph 4(a)(i) of the Policy the Complainant must demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The disputed domain name was registered in January 2006, and the earliest trademark registration, alleged in the Complaint is for October 2006. As indicated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the location, the goods and services and the date of the trademark registration (or first use) are all irrelevant for the purposes of finding rights under the first Policy element. Nevertheless, as the Complainant also alleges common law rights in the trademark CROCS well prior to the registration of the disputed domain name and it may impact the Panel's findings below, the Panel finds it appropriate to discuss the Complainant's common law rights here. It is useful, in this respect, to quote the "consensus view" as digested in the WIPO Overview 2.0, paragraph 1.7:
"The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted."
In the instant case the Complainant has supplied significant and reasonably detailed evidence that the name "Crocs" became a distinctive identifier for its products, which had huge sales and considerable market recognition well before its registration of the corresponding trademarks. This evidence is both consistent with and sufficient under the WIPO Overview 2.0 quoted above, to find actionable rights under the Policy dating back at least to the date of the disputed domain name registration. See, e.g., Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123. It is also pertinent to note that the Complainant's CROCS trademark has subsequently been registered in North America from late 2006 to date.
The Panel finds that the Complainant has evidenced both the registered and unregistered rights in its CROCS mark and finds that the identity and confusing similarity of the disputed domain name to the Complainant's trademark is evident. The disputed domain name contains the entirety of the Complainant's trademark hyphenated with the word "shoes." The amalgamation of the trademark with the word "shoes", does not here avoid confusing similarity with the Complainant's trademark, particularily as the Complainant's primary product is footwear.
It follows that the Complainant has met its burden of proving that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
It is well established in UDRP case law and jurisprudence that a complainant needs to establish at least a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Where such a prima facie case is made, the burden shifts to the respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See also, Meizu Technology Co., Ltd. v. "osama bin laden",WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo,WIPO Case No. D2014-0225.
In the instant case the Complainant has clearly asserted that it has never given any permission or license to the Respondent to use its trademarks in the disputed domain name or otherwise, and that it has no knowledge or belief of any rights or legitimate interests of the Respondent in the disputed domain name. Furthermore, there is no evidence or indicia in the case file, or in logic that would suggest that the Respondent would be known by the name "Crocs", or otherwise has rights or legitimate interests in the disputed domain name.
The Respondent having failed to answer the Complaint, the Complainant has accordingly met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Respondent's original registration of the disputed domain can only be considered to have been with a motive of profiting from the already existing renown and goodwill of the Complainant's trademark and products, notably in order to attract Internet users for commercial gain; the evidence shows that the Complainant's products and name were widely known and it is not plausible that the Respondent chose the disputed domain name by serendipity. This is further evidenced by the disputed domain name itself, which includes the word "shoes" with the Complainant's trademark, and which can be assumed to have been chosen by the Respondent to increase confusion with the Complainant's mark and associated products. Additional evidence in this matter, in form of screen shots and other indicia, demonstrates that the Respondent has used the disputed domain name for commercial gain by attracting Internet users to a site offering footwear and other products. The Complainant describes the Respondent's use as a pay-per-click site. When the Panel visited, from Switzerland, the site to which the disputed domain name resolves on October 31, 2016 he found a site very similar to that described by the Complainant. The site visited offered, in German, various footwear for sale and contained links to other sites apparently offering products in competition with the Complainant's products. The disputed domain name has clearly been used in bad faith for improper commercial gain. The Respondent's deliberate hiding of its identity is here further indicia of bad faith.
The Panel finds that the disputed 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 disputed domain name be transferred to the Complainant.
Nicolas Ulmer
Sole Panelist
Date: November 8, 2016
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