The Complainant is All Star C.V., United States of America, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia / Name Redacted . 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2020, 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 April 23, 2020 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 April 24, 2020. 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 May 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2020. The Center received two informal email communications from a third party on May 13 and June 16, 2020, respectively. The Center notified the Parties that it would proceed to panel appointment on June 15, 2020. The Center appointed Benjamin Fontaine as the sole panelist in this matter on June 22, 2020. 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 The Complainant is All Star C.V, an American company. The company, which was founded in 1908 in Massachusetts, has produced and sold shoes for over a century. For the purpose of the Complaint, the Complainant relies on a number of trade mark registrations (Annex 3 to the Complaint), in particular: - Singaporean trade mark registration No. T1311886G CONVERSE in classes 9 and 25 registered on April 25, 2013; - European Union Trade Mark reg. No. 007600117 CONVERSE in classes 16, 18, 25, 35, registered on December 11, 2009. The disputed domain name The disputed domain name is being used for the retail of counterfeit goods, or so claims the Complainant. The Respondent’s website reproduces the Complainant’s trademarks and logos, namely the star and the chevron that can be equally seen on the Complainant’s website. At present, the disputed domain name resolves to “www.fly-to-turkey.com”, but hosts the exact same content. 5. Parties’ Contentions A. Complainant The arguments of the Complainant on the three elements of the Policy can be summarized as follows: First, the Complainant claims that the trade mark CONVERSE is well-known throughout the world, notably in the fashion industry. The disputed domain name wholly incorporates the Complainant’s CONVERSE brand and couples it with the word “Singapore”, which clearly refers to a section of one of the Complainant’s core markets. Second, the Complainant asserts that the Respondent has no rights or legitimate interests in relation to the CONVERSE brand. The Complainant’s in-house team has confirmed through an investigation that the goods sold via this disputed domain name are counterfeit goods. The Respondent’s use of the disputed domain name to sell counterfeit goods is evidence that it is not using it in relation to a bona fide offering of goods and services. Third, on the issue of bad faith, the Complainant has developed separate arguments on the registration and use of the disputed domain name The Complainant submits that the registration of disputed domain name is an obvious example of a bad faith registration in accordance with paragraph 4(b) of the Policy. The combination of the Complainant’s CONVERSE brand with the generic term “Singapore” does not distinguish the Respondent’s disputed domain name from the Complainant’s CONVERSE brand and leads the average Internet user to believe that the disputed domain name is owned by the Complainant and relates to the sale of genuine CONVERSE goods into the Singaporean and wider Asian market. On the bad faith use, the Complainant argues that the goods sold via the disputed domain name are counterfeit CONVERSE goods. The inclusion of the word “Singapore” in the disputed domain name is further evidence of the Respondent’s intention to deceive consumers as to the origin and authenticity of the goods sold. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trade mark or a service mark in which it has rights. The Complainant owns several trade mark rights over the sign CONVERSE. These trade marks are fully reproduced in the disputed domain name Therefore, the first element of the Policy is satisfied. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In this case, the Complainant has sufficiently argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name. Further, the impersonation of the Complainant’s identity, through the reproduction of its trademark CONVERSE and its logos, and the retail of counterfeit goods, is obviously not a bona fide offering of goods. Accordingly and absent specific allegations of the Respondent, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are: (i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or (ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the 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, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location. Regarding, first, the registration of the disputed domain name in bad faith, the Panel has no doubt that the Respondent had specifically in mind the Complainant’s trade mark CONVERSE when it registered the disputed domain name. It is apparent from the evidence in the file that the business initiated by the Complainant is extremely successful. Indeed, the Complainant has built a significant reputation and has built up a vast amount of goodwill in the CONVERSE brand worldwide in relation to a range of goods, albeit mainly for shoes. Moreover, the addition of the word “Singapore” is not sufficient to counteract the strong presumption of registration in bad faith, as it is a pure geographical term. On the contrary, it is likely to be perceived by Internet users as a sub-domain name of the Complainant for its operations in Singapore and neighboring areas. The content of the website at the disputed domain name also supports this finding. Regarding, second, the use of the disputed domain name in bad faith, the evidence on file shows that the disputed domain name is being used to sell counterfeit products bearing the Complainant’s trade mark. This shows the registration and use of the disputed domain name in bad faith. See, Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017. Indeed, in accordance with the information and evidence provided by the Complainant, which was not contradicted by the Respondent, the disputed domain name was used to host a website used for the retail of counterfeit shoes. Accordingly, the third criteria element set out in paragraph 4(a) of the Policy is also satisfied. 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 Benjamin Fontaine 1 The Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Sole Panelist
Date: July 6, 2020
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