Complainant is Columbia Insurance Company of Omaha, Nebraska, United States of America (“United States”), represented by IP Attorneys Group, United States.
Respondent is Congj Buxar of Clemmons, North Carolina, 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 September 13, 2018. On September 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.
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 September 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 11, 2018.
The Center appointed Mark Partridge as the sole panelist in this matter on October 18, 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
Through its licensees and predecessors-in-interest, Complainant has been using the BORN Mark continuously in the footwear industry since 1994. Complainant owns several BORN United States trademark registrations, including: Reg. No. 1947333; Reg. No. 3542937; Reg. No. 5019120; and Reg. No. 3512409.
Through its authorized licensee H.H. Brown Shoe Company, Complainant registered the domain name on February 2, 1999. Complainant and the authorized licensee are owned by the same parent company.
The disputed domain name was created on August 9, 2017, and was last updated on August 2, 2018. 5. Parties’ Contentions A. Complainant
In requesting that the disputed domain name be transferred to it, Complainant contends that it has satisfied the three necessary elements under the Policy.
First, Complainant asserts that it has substantial United States Federal and common law rights in the BORN Mark for use with footwear. Complainant asserts that due to the substantial and exclusive use of the BORN Mark for footwear, the BORN Mark has become well-known and famous in the footwear industry. Complainant contends that the disputed domain name is confusingly similar to Complainant’s mark because it incorporates all elements of Complainant’s Mark with the addition of descriptive terms.
Second, Complainant contends that Respondent has no rights or legitimate interests. Complainant also asserts that it does not have any relationship with Respondent, nor has Complainant authorized Respondent to use the BORN Marks.
Third, Complainant argues that the disputed domain name was registered and used in bad faith by Respondent, particularly within the terms of paragraph 4(b)(iv) of the Policy. In light of the extensive and prior use of the BORN Marks, Complainant maintains that Respondent knew of Complainant’s rights when Respondent registered the disputed domain name. Complainant argues that Respondent’s website “closely mimics the look and set up” of Complainant’s website, leaving absent any indication that a website other than Complainant’s has been reached. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Respondent is in default. Accordingly, the Panel may choose to accept the reasonable contentions of Complainant as true. Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287 (citing Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,WIPO Case No. D2006-0292); see also OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2015-1149 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, and notwithstanding Respondent’s default, Complainant must prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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. A. Identical or Confusingly Similar
To satisfy the first element, a complainant must establish that the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights. This inquiry generally involves a “side-by-side” comparison of the disputed domain name and the relevant trademark to assess whether the mark is recognizable within the disputed domain name. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). For purposes of the first element, the Top-Level Domain (“TLD”) “.com” in the disputed domain name is disregarded. See WIPO Overview 3.0, section 1.11; see also Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM,WIPO Case No. D2001-0918.
Here, Complainant has introduced evidence, establishing that it has sufficient rights in the BORN Marks. Complainant has several BORN trademark registrations. Based on the evidence discussed here and in the annexes attached to the Complaint, the Panel finds that Complainant has sufficient rights in BORN.
Next, the Panel considers a “side-by-side” comparison of and the BORN Marks. The disputed domain name incorporates Complainant’s BORN trademark in its entirety as its initial component. The disputed domain name consists of BORN and the readily identifiable terms, “shoes” and “shop”.
In “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. lusheng,WIPO Case No. D2012-1227, a panel found that was confusingly similar to the complainant’s marks. In assessing this first element, the panel concluded that the “addition of descriptive terms such as ‘shoe’ and ‘shop’” to the complainant’s mark does not “dispel” the confusing similarity between the domain name and the complainant’s mark. Id. The panel reasoned that since the domain name at issue “directly indicate[d] the business of the [c]omplainant[,]” the use of those descriptive terms only “reinforce[d] the confusing similarity” between the domain name and complainant’s mark.
The Panel finds the reasoning in “Dr. Martens” persuasive. The Panel agrees that, based on the evidence presented here, the disputed domain name’s addition of “shoes” and “shop” does not prevent a finding of confusing similarity. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BORN Marks. B. Rights or Legitimate Interests
To satisfy the second element, a complainant must make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once the complainant satisfies its initial burden, the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the disputed domain name. AB Electrolux v. Mostafa Faheem,WIPO Case No. D2017-2233; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel, shall demonstrate that respondent has rights or legitimate interests in a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy.
As detailed above, Complainant contends that Respondent has no rights or legitimate interests. Complainant also asserts that it does not have any relationship with Respondent, nor has Complainant authorized Respondent to use the BORN Marks. For these reasons, the Panel concludes that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in .
As a result, the burden shifts to Respondent. As noted above, Respondent failed to respond to Complainant’s contentions. That, however, does not mean that Complainant automatically prevails on this element.
The Panel notes that Complainant’s arguments mainly consist of conclusory statements. “In cases involving wholly unsupported and conclusory allegations advanced by the complainant, or where a good faith defense is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to prove its case.” See WIPO Overview 3.0, section 4.3. To be clear, “[t]he Policy is designed to solve clear-cut cases of abusive conduct involving a domain name.” Pet Plan Ltd v. Registration Private, Domains By Proxy, LLC / Augusto Valent,WIPO Case No. D2016-2204 (emphasis added). While the Panel recognizes that “proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’,” Philip Morris USA Inc. v. Aid Idrizovic,WIPO Case No. D2018-0175, the Panel finds that allegations that “merely repeat or paraphrase the criteria or scenarios” under the UDRP should generally be insufficient for either party, see Futbol Club Barcelona v. Javier Garcia de Leániz,WIPO Case No. D2017-1308 (citing WIPO Overview 3.0, section 4.2).
Based on Complainant’s Complaint and its attached annexes, which provides screenshots of the disputed domain name, the Panel recognizes that the Oki Data case is implicated. See WIPO Overview 3.0, section 2.8 (discussing Oki Data). In Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the Panel outlined four requirements that a respondent must satisfy to show that it is using the disputed domain name with a bona fide offering of goods or services. One Oki Data factor provides that “the site itself must accurately disclose the [respondent’s] relationship with the trademark owner[.]” L’Oréal v. Thommagorn Hemtawen,WIPO Case No. D2017-2336; AB Electrolux v. Mostafa Faheem,WIPO Case No. D2017-2233; LEGO Juris A/S v. John Davis,WIPO Case No. D2018-0313 (noting the “Respondent cannot benefit from Oki Data since the Respondent has not accurately disclosed the lack of any relationship between it and the Complainant”).
Complainant does not address Oki Data. Panels, however, “have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious ….” WIPO Overview 3.0, section 4.2. And “it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.” Id., section 4.8. Here, based on the submitted screenshots of the disputed domain name and particular circumstances of the case, the Panel finds that Respondent does not “accurately and prominently disclose the registrant’s relationship with the trademark holder ….” Id., section 2.8.1. Upon an independent review of the disputed domain name, the Panel’s conclusion is also further supported. Because Respondent is precluded from satisfying the Oki Data test for this reason, Respondent’s use of the disputed domain name cannot be considered bona fide.
For the reasons above, the Panel concludes that the second element, paragraph 4(a)(ii) of the Policy, is satisfied. C. Registered and Used in Bad Faith
Lastly, Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy offers a non-exhaustive list of circumstances that indicate bad-faith use and registration of a domain name. Particularly, paragraph 4(b)(iv) provides that bad faith may be evidenced by circumstances indicating that respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by seeking to create a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website.
The Panel finds that the disputed domain name was registered and used in bad faith, particularly within the terms of paragraph 4(b)(iv) of the Policy. Complainant maintains several registered BORN trademark registrations, having use since the 1990s. This makes it likely that Respondent knew of Complainant’s rights when Respondent registered the disputed domain name. Complainant argues that Respondent’s website “closely mimics the look and set up” of Complainant’s website, leaving absent any indication that a website other than Complainant’s has been reached. The Panel agrees. Moreover, bad faith is further evidenced by the fact that, as discussed above, Respondent fails to disclose the relationship (or lack thereof) with Complainant. The Panel concludes that Respondent registered and is using the disputed domain name in attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement. See paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel concludes that Complainant has sufficiently shown that Respondent has registered and used the disputed domain name in bad faith, thereby satisfying the third element. 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.
Mark Partridge
Sole Panelist
Date: November 14, 2018
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