The Complainant is Crocs, Inc., United States of America (“United States”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Do Tran Ngoc Mai, Viet Nam.
2. The Domain Name and RegistrarThe Disputed Domain Name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 10, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 17, 2021, the Center transmitted an email communication to the Parties in English and Vietnamese regarding the language of the proceeding. On November 17, 2021, the Complainant confirmed its request that English be the language of the proceeding and submitted a translation of the Complaint in Vietnamese. The Respondent did not comment on the language of the proceeding.
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 November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2021.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on January 10, 2022. 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 BackgroundThe Complainant is a United States-based company that is known for innovative casual footwear under the trademarks CROCS. According to the Complainant, from its inception in 2002, the Complainant has sold more than 720 million pairs of shoes in more than 90 countries around the world. Accordingly, the Complainant has used the trademarks CROCS continuously in connection with the advertising, offering for sale, and sale of its footwear products in the United States and other countries.
The Complainant’s trademarks CROCS have been registered for goods in some classes, including class 25 for footwear, in a variety of countries under a number of trademark registrations, including but not limited to the United States trademark No. 3836415 registered on August 24, 2010; the Canadian trademark No. TMA675686 registered on October 26, 2006; and the Vietnamese trademark No. 104784 registered on July 9, 2008.
Additionally, the Complainant is the registrants of some domain names featuring the trademarks CROCS, notably the domain names
The Disputed Domain Name
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
First, the Complainant contends that the Complainant is the registered owner of trademark registrations for CROCS in many jurisdictions. Further, the Complainant submits that its trademarks CROCS have become well known and famous for many years due to the extensive use, promotional efforts of the trademark CROCS since 2002. As such, the Complainant sufficiently establishes rights in the trademark CROCS. Besides, the Complainant is the owner of some domain names consisting CROCS trademarks.
Second, the Complainant asserts that the Disputed Domain Name is confusingly similar to the trademarks CROCS owned by the Complainant since the Disputed Domain Name incorporates the Complainant’s trademarks CROCS in its entirety, and the addition of the term “vn” (referring to Viet Nam) and the generic Top-Level Domain (“gTLD”) suffix “.com” could not dispel any likelihood of confusion. In contrast, the addition of the term “vn” makes the confusion more likely as it confuses consumers into thinking that the Disputed Domain Name refers to an authorized retailer of the Complainant in Viet Nam.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
First, the Complainant argues that the Respondent has had constructive knowledge of the Complainant’s CROCS trademarks before registering the Disputed Domain Name, so the Respondent does not have proprietary rights, or legitimate interests, in the Disputed Domain Name. Additionally, the Respondent expressly chose the trademark CROCS in the Disputed Domain Name because the Respondent has created a repair business that fixes footwear bearing the trademark CROCS and the website under the Disputed Domain Name has images of and references to the Complainant’s footwear.
Second, the Complainant contends that the Complainant’s CROCS trademarks have been well known and famous for many years and thus, the Respondent’s registration of the Disputed Domain Name wholly incorporating the Complainant’s famous mark is not supported by legitimate interests.
Furthermore, the Complainant argues that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, since the goods offered for sale on the website under the Disputed Domain Name are unauthorized. In addition, the Complainant has not authorized or licensed the Respondent to use the trademarks CROCS in connection with any services on the Disputed Domain Name.
Finally, the Complainant contends that the Respondent is not commonly known by the Disputed Domain Name since the Respondent’s name is “Do Tran Ngoc Mai”, and such individual has no relationship with the Complainant and would not commonly be known by the name “Crocs”.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
First, the Complainant argues that the Respondent is intentionally diverting the Internet users searching for the Complainant’s authorized goods and services to the website under the Disputed Domain Name, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location. This demonstrates that the Respondent registered and is using the Disputed Domain Name in bad faith.
Second, the Complainant submits that the Respondent violated the Complainant’s intellectual property rights, by using the trademark CROCS on the website under the Disputed Domain Name and selling CROCS counterfeits.
Third, the Complainant contends that the Respondent had knowledge of the CROCS trademark when it registered the Disputed Domain Name given the fame of the Complainant’s CROCS trademarks and the fact that the Respondent is using the Disputed Domain Name and various social networking/online platforms to sell unauthorized and counterfeit products bearing the Complainant’s CROCS trademarks.
Furthermore, the Complainant submits that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainant since, by using the Disputed Domain Name, the Respondent is selling products bearing the Complainant’s CROCS trademarks and siphoning the customers away from the Complainant’s websites.
Finally, the Complainant contends that the Respondent’s registration of the Disputed Domain Name was solely done to prevent the Complainant from registering the Disputed Domain Name and was likely acquired for the purpose of selling the Disputed Domain Name for valuable consideration in excess of any out-of-pocket expenses.
With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Procedural Issues(I) Language of the Proceeding
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated November 17, 2021, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) submit the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding by November 20, 2021.
On November 17, 2021, the Complainant filed a request that English be the language of the proceeding and submitted a translation of the Complaint in Vietnamese.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred, and the possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho)WIPO Case No. D2003-0679
In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:
(i) the fact that the Complainant, an American entity, does not appear to be able to communicate in Vietnamese and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;
(ii) the English language is quite popular in Viet Nam, where the Respondent resides, especially in the trading context; and the website under the Disputed Domain Name contains English content; these suggest that the Respondent has ample knowledge of the English language and be able to communicate quite well in English;
(iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in neither English nor Vietnamese.
Therefore, for the purpose of easy comprehension of the Complainant (ultimately, the party solely taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.
(II) The Respondent’s Failure to Respond
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Substantive IssuesI. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has evidenced that it has rights in and to the trademarks CROCS, which were registered in a number of countries before the registration of the Disputed Domain Name. In addition, it is evidenced that the Complainant has widely used the trademarks CROCS for footwear products.
Second, the Disputed Domain Name comprises the Complainant’s CROCS trademarks, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “vn”, which is the common short form of “Viet Nam”, the name of the country where the Respondent resides. As such, the Panel finds that the trademarks CROCS remain clearly recognizable in the Disputed Domain Name. It is well established that the addition of terms or letters to a trademark does not prevent a finding of confusing similarity, as it was found in previous UDRP decisions (see, e.g., Supercell Oy v. See Privacy Guardian.org / Mediastack,WIPO Case No. D2017-2177; Johnson & Johnson v. Tung Nguyen, WIPO Case No. D2017-1635).
Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003)
Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s CROCS trademarks, and paragraph 4(a)(i) of the Policy is established.
II. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:
“(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 consumers or to tarnish the trademark or service mark at issue.”
The Panel finds that the Complainant has prima facie established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions.
The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the Complainant, once a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the Disputed Domain Name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted providing arguments or evidence to the contrary.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization in any kind to use the Complainant’s CROCS trademarks has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction related to CROCS. Thus, the Panel finds that the Respondent has no rights in the trademarks CROCS.
A reseller or distributor may be making a bona fide offering of goods and services and thus, have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903 (“Oki Data”), including:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
In this particular case, the Panel finds that the Respondent did not place any statement or disclaimer disclosing accurately its relationship with the Complainant on the website under the Disputed Domain Name. Further, on such website, the Panel also finds that the website’s title is “Crocs Store| Crocs flip flops| Duet, Band, Baya, LiteRide…”, and the website contains the Complainant’s CROCS trademark, logo and a copyright statement “COPYRIGHTS © 2020 BY CROCS STORE”. These indications may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality.
In addition, the Panel finds that, the Respondent advertises and offers for sales of the footwear products under third parties’ trademarks, such as NATIVE and ADIDAS, besides the footwear products bearing the Complainant’s trademark CROCS on the website under the Disputed Domain Name.
With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.
Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name. Further, there is also no evidence showing that the Respondent operates any bona fide business or organization under the Disputed Domain Name. Therefore, it is not evidenced that the Respondent is known or identified by the term “crocsvn” or that the Respondent has any right in it.
Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.
III. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively.
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and is using the Disputed Domain Name in bad faith. The Respondent did not refute the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s bad faith registration and use of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s CROCS trademarks have been registered in a variety of jurisdictions around the world. In addition, the Complainant’s CROCS trademarks have been put in use for a long period of time and has gained certain reputation in the sector of footwear products. The Complainant’s registrations and use of the trademarks CROCS and its domain name
The Disputed Domain Name comprises the Complainant’s CROCS trademarks in its entirety, adding the term “vn” at the end. Given the extensive use of the CROCS trademarks for footwear products by the Complainant, which occurs in numerous countries, including Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its CROCS trademarks when registering the Disputed Domain Name. As such, the Panel considers that the registration of the Disputed Domain Name is an attempt by the Respondent as to take advantage of the Complainant’s goodwill and the reputation of the Complainant’s CROCS trademarks.
On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is still resolving to an online store offering footwear products branded with the Complainant’s trademarks CROCS. In addition to the adoption of the Complainant’s CROCS trademarks as a uniquely distinctive part in the Disputed Domain Name, the Respondent uses the Complainant’s CROCS trademarks and logo on the website thereunder and falsely represents itself as an authorized distributor of the Complainant by the indications “COPYRIGHTS © 2020 BY CROCS STORE”, “Crocs Store| Crocs flip flops| Duet, Band, Baya, LiteRide…”.
The Panel takes the view that any Internet users seeking to purchase the Complainant’s CROCS products would likely mistakenly believe that the Respondent is either connected to or associated with the Complainant, while no such connection exists in fact. The Panel therefore finds that by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location, which is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established.
7. DecisionFor 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
Pham Nghiem Xuan Bac
Sole Panelist
Date: January 21, 2022