Complainants are Na'ale Naot Agricultural Cooperative Society for Business Ltd. of Upper Galilee, Israel and Yaleet, Inc. of Melville, New York, United States of America ("United States"), represented by Law Firm of Jack M. Platt, United States.
The Respondent is Congj Buxar of Chicago, Illinois, United States. 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 December 21, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 the Respondent of the Complaint, and the proceedings commenced on December 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 19, 2018.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on February 15, 2018. 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
There are two Complainants in this proceeding. The first Complainant is Na'ale Naot Agricultural Cooperative Society for Business Ltd. ("Na'ale"), of Upper Galilee, Israel. The second Complainant is Yaleet, Inc. ("Yaleet"), of Melville, New York, United States. Na'ale is the owner of NAOT trademark registrations in the United States and other countries, both in word format and in design marks, in connection with footwear and shoes. Yaleet is the owner of the domain name . Complainants Na'ale and Yaleet are under common ownership and control.
The NAOT trademarks are registered in connection with footwear and shoes in the United States, Canada, Hong Kong and other countries, with the earliest United States trademark registration dating from February 1, 1994.
The Disputed Domain Name was registered on August 8, 2017. As of the date of filing the Complaint, the Disputed Domain Name offers for sale Complainants' footwear products. 5. Parties' Contentions A. Complainants
Na'ale is an Israeli manufacturer of footwear. Yaleet imports Na'ale's footwear and distributes to retailers in the United States, Canada and other countries. Yaleet claims the exclusive right to import and distribute Na'ale's NAOT footwear products. Yaleet promotes Na'ale's NAOT footwear on its website, "", which was registered on July 17, 1997. Yaleet's website includes a virtual catalog of its product offerings, with photographs and descriptions of Na'ale's footwear.
Complainants assert that the word "naot" suggests a place of repose in Hebrew. They assert that the Disputed Domain Name is confusingly similar to the NAOT trademarks because both begin with the word "naot", to which Respondent has simply affixed the word "outlet", falsely suggesting to Internet users that Respondent's website is an outlet for Complainants' footwear.
Complainants assert that Respondent is making prominent unauthorized use on the website linked to the Disputed Domain Name of Complainant Na'ale's registered trademarks, and is also making use of numerous copyright-protected photographs of Na'ale's NAOT merchandise unlawfully lifted from Complainants' website. Complainants assert that many, and perhaps all, of the photographs of footwear items appearing on Respondent's website linked to the Disputed Domain Name were lifted without authorization from Complainant's website. As Complainant Yaleet is the exclusive distributor of Complainant Na'ale's footwear in many countries, Complainants have no reason to believe that Respondent has lawfully acquired any NAOT footwear to sell on his site. Complainants assert that Respondent may be a "phishing" site intended to obtain the credit card information of Complainants' prospective consumers for improper purposes. Complainants assert that they have received communications from a few customers who say that they have ordered goods through Respondent's website but have received no goods in fulfillment of their orders.
Complainants assert that Respondent has no rights or legitimate interests in respect of his domain name, as Complainants have not licensed or otherwise authorized Respondent to use the NAOT trademark. Respondent is not a customer of Complainants, and because Na'ale's NAOT-brand footwear is available to resellers only by purchase from Complainants, Complainants assert that Respondent has no lawful access to commercial quantities of authentic NAOT-brand footwear.
Complainants assert that they impose a policy proscribing their resellers from using NAOT in a domain name, and from selling NAOT-brand footwear online. As such, Respondent's use of NAOT in his domain name would be a violation of Complainants' policy even if Respondent had a business relationship with Complainants, which Complainants deny.
Complainants are unaware of any evidence of Respondent's use, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Complainants are also unaware of whether Respondent has been commonly known by the Disputed Domain Name. Complainants assert that Respondent is making no legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Complainants assert that the Disputed Domain Name was registered and is being used in bad faith because Respondent is intentionally attempting to attract for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainants' NAOT trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent's website. B. Respondent
Respondent did not reply to Complainants' contentions. 6. Discussion and Findings A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [respondent has] registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) [respondent has] registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) [respondent has] registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, [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 complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
According to paragraph 4(c) of the Policy, a respondent may demonstrate rights in or legitimate interests to a domain name by any of the following, without limitation:
"(i) Before any notice to you 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, 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 are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue."
Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b). B. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant Na'ale's NAOT registered trademarks. The Panel finds that the term "naot" is arbitrary, and not descriptive of footwear or shoes. Adding the descriptive term "outlet" to Complainants' trademark increases, rather than diminishes, the likelihood of confusion as Internet users will receive the impression that Respondent's website is an outlet for Complainants' NAOT footwear. See Philipp Plein v. Manalo Ricard / Domain Admin,WIPOCase No. D2016-1165 ("The additive 'outlet' gives the erroneous impression that the online shop on the Respondent's website be (sic) the official outlet shop from the Complainant.").
The Panel finds that Complainants have provided sufficient evidence to establish paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Complainants have made a prima facie case under paragraph 4(a)(ii) of the Policy by showing that Complainants have not licensed or otherwise authorized Respondent to use NAOT trademarks, that Respondent is not a customer or authorized reseller of Complainants, that Respondent has no lawful access to commercial quantities of authentic NAOT-brand footwear, that Respondent has not made use, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services, that Respondent has not been commonly known by the Disputed Domain Name, and that Respondent is making no legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Once Complainant makes its prima facie case of no rights or legitimate interests, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1. Respondent failed to come forward with allegations or evidence demonstrating either rights or legitimate interests in the Disputed Domain Name. As Respondent failed to file a Response, it may be presumed that Respondent has no rights or legitimate interests in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000‑1221. As a result, Complainants have established paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel finds that Complainants have provided sufficient evidence to satisfy paragraph 4(b)(iv) of the Policy, namely that by using the Disputed Domain Name, Respondent intentionally intended to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainants' mark as to the source, sponsorship, affiliation or endorsement of Respondent's website.
Respondent's website linked to the Disputed Domain Name offers the sale of Complainants' footwear under NAOT trademarks. Respondent's website lifted copyrighted images of Complainants' NAOT products, increasing the likelihood that Internet users would be confused into believing Respondent's website emanated from or was sponsored or authorized by Complainants. Complainants received complaints from Internet users who had attempted to purchase Complainants' NAOT footwear and had not received their orders, indicating that the users had indeed been attracted to Respondent's website by the confusion Respondent created with Complainants' mark, and that Respondent was not acting as a legitimate reseller of Complainants' footwear. These facts evidence the registration and use of the Disputed Domain Name in bad faith as outlined in paragraph 4(b)(iv) of 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 the Complainant.
Jordan S. Weinstein
Sole Panelist
Date: March 9, 2018
Full & Egal Universal Law Academy