Complainant is Inkkas, LLC of Wilmington, Delaware, United States of America ("United States"), represented by Neal, Gerber & Eisenberg LLP, United States.
Respondent is Katherine Garcia of Baltimore, Maryland, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 11, 2017. On October 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2017, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on November 13, 2017.
The Center appointed Steven L. Snyder as the sole panelist in this matter on November 17, 2017. 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
For adults who envy the colorful and fun shoes that kids wear, Complainant Inkkas, LLC offers a solution: A line of men and women's shoes that are decorated with striking and often colorful designs. The names that Complainant affixes to its INKKAS-branded shoes give a fair idea of how the shoes look: The "Snow Leopard" is full of black-and-white spots; the "Camo Garden" features a camouflage pattern; the "Prickly" has drawings of saguaro cacti; and the "British Royalty" displays a picture of an English Bulldog smoking a cigar and wearing a crown. Photographs of these unique shoes can be seen on Complainant's website, . Consumers may also purchase the INKKAS-branded shoes through this website.
In July 2012, Complainant started offering its INKKAS-branded shoes to the public. Shortly before that date, Complainant had registered the domain name. On December 19, 2012, Complainant filed an application to register the INKKAS trademark with the United States Patent and Trademark Office ("USPTO"). The application was approved and on July 30, 2013, the USPTO registered INKKAS in International Class 025 for "footwear; shoes." See,U.S. Reg. no. 4376161. Complainant has also secured registrations for its INKKAS trademark in France, the European Union, China, Japan, the Republic of Korea, Brazil and Peru.
On March 6, 2017, Respondent registered the disputed domain name, , and used it to direct visitors to a website that prominently features the INKKAS mark and color photographs of INKKAS‑branded shoes. At the top of the website appears this line: "Inkkas Shoes, Inkkas Sale Inkkas Cheap Men's Shoes – Over 55% Off." Visitors may purchase shoes via the website with one of several credit cards. There is no indication anywhere on the website that Respondent is unaffiliated with Complainant. Indeed, it would be very easy for a consumer to believe he or she has visited Complainant's official website.
In August 2017, Complainant attempted to send a cease-and-desist letter to Respondent at the address listed in the WhoIs record. Complainant also tried to call Respondent at the listed phone number. Both attempts were futile: The phone number did not work and the express mail service reported that the address was invalid and the letter could not be delivered.
Having struck out on its attempt to directly contact Respondent, Complainant initiated this action on October 11, 2017. The Center notified Respondent of the action and gave Respondents until November 9, 2017, to file its response. That date came and went without any word from Respondent and on November 13, 2017, the Center issued a notice of default. The case was then referred for resolution to the Panel. 5. Parties' Contentions A. Complainant
After discovering the existence of the disputed domain name, Complainant attempted to contact Respondent via the contact information in the WhoIs record for the disputed domain name, .
Complainant sent its cease-and-desist letter via FedEx to Respondent at her Baltimore address on August 25, 2017. A few days later, FedEx returned the envelope with these handwritten notations: "No Such Street" and "Bad Address." Complainant's counsel then called Respondent and found the phone number was not in service.
Finally, Complainant made a "test purchase of goods" via the website linked to and received a pair of shoes from an address in Guangdong, China. The goods that Complainant attempted to purchase were not the goods that were delivered. Utilizing Respondent's website, , Complainant ordered a pair of "Inkkas Low Top Trainers Bluebird Men's shoes" for USD 39.29. The "Bluebird Low Top" that Complainant manufactures is a very colorful sneaker clad in Peruvian textiles that retails for USD 74.00. The product that Respondent delivered looks like a pair of Nike-brand running shoes that are blue with a lime-green Nike "swoosh" and trim.
Complainant asserts that Respondent registered the disputed domain name, , "with an intent to confuse the public as to the source, sponsorship or affiliation" of Respondent's website and "to trade upon the significant goodwill and extensive promotional efforts associated with Complainant's INKKAS mark." Complainant further asserts that it has established the three elements necessary to prevail under the Policy.
First, Complainant asserts that it owns the INKKAS mark and that the disputed domain name, , is confusingly similar to the INKKAS mark. Although the disputed domain name add the word "shoes" to Complainant's mark, that combination does not prevent confusion. Indeed, Complainant argues that the combination may make confusion more likely: "[T]he addition of the generic term 'shoes' may
increase confusion between the Disputed Domain Name and Complainant's mark because
Complainant offers shoes and online retail store services featuring shoes."
Second, Complainant argues that Respondent does not have any rights or legitimate interests in the disputed domain name: There is "no legal relationship" between the two Parties that would give Respondent the right to use the INKKAS mark; Respondent is not commonly known as "inkkasshoes"; and instead of engaging in a bona fide offering of goods, Respondent uses the INKKAS mark to "bait and switch" consumers, as shown by its fulfillment of an order for an INKKAS-brand shoe by delivering instead what appears to be a NIKE-brand shoe.
Third, Complainant maintains that Respondent registered and has used the disputed domain name in bad faith. The INKKAS mark is fanciful, has no descriptive meaning, and would not have been chosen by Respondent for the disputed domain name unless she had the intent "to exploit" the similarity between her domain name and Complainant's mark. Additionally, Complainant used its mark in commerce and obtained a USPTO registration for the mark several years before Respondent registered the disputed domain name. At the very least, Respondent had "constructive knowledge" of Complainant's rights in the INKKAS mark at the time she registered the disputed domain name. Other indicia of bad faith registration and use include Respondent's provision of fake contact information when registering the disputed domain name, and her use of the disputed domain name to "bait and switch" when fulfilling orders.
For its remedy, Complainant requests the transfer of the disputed domain name to its possession. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Three elements must be proven by a complainant in order to prevail under the Policy, paragraph 4(a):
1. The disputed domain name is "identical or confusingly similar to a trademark or service mark in which the complainant has rights"; and
2. The respondent has "no rights or legitimate interests in respect of the domain name"; and
3. The disputed domain name was "registered and is being used in bad faith."
This burden of proof applies even when a respondent has failed to respond, for there is no provision for a default judgment under the Policy. See 1D Media Limited v. Mohamed Zerouali,WIPO Case No. D2015-1296 ("Under the Policy, unlike much civil litigation, a default does not constitute an admission of any matter pleaded in the Complaint. Even in a default case "[t]he Policy requires the Complainant to prove each of the three elements.").
In this case, Complainant has proved that it markets shoes with original designs under the INKKAS mark and that Respondent is simply a commonplace cybersquatter. A. Identical or Confusingly Similar
Long before Respondent registered the disputed domain name, , Complainant had started selling INKKAS-brand shoes and had secured registrations for the INKKAS mark in numerous jurisdictions. The Panel concludes that the disputed domain name is confusingly similar to a trademark in which Complainant has rights. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625 ("Confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark.").
Complainant has established the first element under the Policy. B. Rights or Legitimate Interests
Complainant alleges that Respondent has used to engage in "bait and switch" and for that reason, among others, she has no rights or legitimate interests in the disputed domain name. The Panel must quibble a bit with Complainant's argument: Respondent did not really engage in "bait and switch."
Here is how the Merriam-Webster dictionary defines "bait and switch": "[A] sales tactic in which a customer is attracted by the advertisement of a low-priced item but is then encouraged to buy a higher-priced one." A good example of that unethical tactic is found in People v. Glubo, 5 A.D.2d 527 (N.Y. App. Div. 1958), where the merchant heavily advertised a "top quality" sewing machine at a bargain price and then "deliberately sabotag[ed] every attempted purchase at that price" in an effort to sell an more expensive model. Id. at 545. As part of this "bait and switch" campaign, the merchant would tell consumers that "one woman lost her eye when the machine jammed." Id. at 534-35.
Instead of engaging in "bait and switch," Respondent simply engaged in fraud: Respondent misappropriated the INKKAS mark to sell what it purported to be a genuine INKKAS-brand shoe; Respondent then delivered a much different pair of NIKE-brand shoes (which may themselves be counterfeit).
Regardless of whether a more liberal interpretation of "bait and switch" could encompass Respondent's activities, it is clear that Respondent does not have any rights or legitimate interests in the disputed domain name.
Complainant has established the second element under the Policy. C. Registered and Used in Bad Faith
There is more than ample evidence in the record that Respondent registered the disputed domain name in bad faith and has used it in bad faith. Evidence of bad faith registration is shown by Respondent's provision of false contact information when registering . See, e.g., Euromarket Designs, Inc. d/b/a Crate & Barrel v. Namesnet,WIPO Case No. D2000-1196 ("The false contact information is evidence of use and registration in bad faith").
Evidence of bad faith usage is shown by Respondent's unauthorized utilization of Complainant's INKKAS mark to perpetrate a fraud upon consumers. Respondent registered a domain name that is confusingly similar to Complainant's mark; Respondent linked the disputed domain name to a website that appears to be sponsored by Complainant; Respondent used the website to advertise INKKAS-brand shoes for sale at deep discounts; and then Respondent completed the fraud by delivering what appear to be NIKE-brand shoes.
Complainant has established the third element under the Policy. 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.
Steven L. Snyder
Sole Panelist
Date: November 22, 2017
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