The Complainant is Oofos, Inc., United States of America (“United States” or “US”), represented by Sunstein LLP., United States.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2021. On November 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2021, 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 November 18, 2021 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 November 23, 2021.
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 November 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2021.
The Center appointed Mihaela Maravela as the sole panelist in this matter on December 21, 2021. 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.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual BackgroundAccording to the information provided by the Complainant, the Complainant is a footwear manufacturer headquartered in the US and a leader in the field of comfortable recovery footwear. The Complainant has used its OOFOS trademark in connection with footwear since 2011.
The Complainant has registered several trademarks consisting of OOFOS including the US trademark registration No. 5576699 registered on October 2, 2018.
The disputed domain name was registered on May 18, 2021 and according to information from the Complainant it resolves to a website offering for sale various shoes, including shoes purportedly pretending to be the Complainant’s OOFOS shoes.
5. Parties’ Contentions A. ComplainantThe Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademarks OOFOS as it incorporates the Complainant’s trademark in full, with the addition of the words “outlet store” which are related to the Complainant’s OOFOS trademark as they merely indicate a type of store in which OOFOS branded merchandise is available for purchase.
With respect to the second element, the Complainant argues that the Respondent is using the disputed domain name to direct Internet traffic to its website in order to sell its own footwear. The Respondent’s use of the disputed domain name in order to sell such goods is a deliberate attempt to take commercial advantage of the Complainant’s rights in its OOFOS trademark. The Complainant also argues that it does not run outlet stores, and that the Respondent’s adoption of the disputed domain name to run a website on which counterfeit products marked with the OOFOS logo are sold is unauthorized by the Complainant. The Complainant contends that it has never licensed or otherwise permitted the Respondent to use the trademark OOFOS.
As regards the third element, the Complainant argues that the Respondent is engaged in active commercial use of the disputed domain name to sell footwear, that the Complainant contends are, upon information and belief, counterfeit OOFOS products. The Respondent’s use of the disputed domain name is an intentional attempt to attract Internet users for commercial gain to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the products on the Respondent’s website. The Complainant also contends that the Respondent has mimicked the look and feel of the Complainant’s legitimate website and is trying to benefit of the confusion it has intentionally caused.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsNo communication has been received from the Respondent in this case. However, given that the Complaint was sent to the relevant address disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has provided evidence of its rights in the OOFOS trademarks. The trademark OOFOS is reproduced in its entirety in the disputed domain name. The addition of the words “outlet”, and “store” does not prevent a finding of confusing similarity with the Complainant’s trademark OOFOS, which is recognizable in the disputed domain name. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such trademarks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is well accepted by UDRP panels that a generic Top-Level-Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.
This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, 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; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
From the evidence put forward by the Complainant, the website to which the disputed domain name resolves redirects Internet users to a website that mimics the Complainant’s official website and is used for selling products under the Complainant’s OOFOS trademark. The Complainant contends that it has never licensed or otherwise permitted the Respondent to use the trademark OOFOS. The website at the disputed domain name displays no disclaimer as to the lack of any relationship with the Complainant. Irrespective of whether the goods offered for sale are genuine or not, the Respondent’s use of the disputed domain name in the above circumstances is not in connection with a bona fide offering of goods or services as contemplated by the first circumstance of paragraph 4(c) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, section 2.8 of the WIPO Overview 3.0.
Also, there is no evidence that the Respondent is commonly known by the disputed domain name in the meaning of the second circumstance of paragraph 4(c) of the Policy. Moreover, the use of the disputed domain name is not a legitimate noncommercial or fair use as contemplated by the third circumstance of paragraph 4(c) of the Policy.
Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. The terms “outlet” and “store” which describe or are associated to the activity of the Complainant are seen as tending to suggest sponsorship or endorsement by the trademark owner. See section 2.5.1 of the WIPO Overview 3.0.
The Panel considers that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because it did not respond to the Complainant’s contentions.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
The disputed domain name was registered many years after the Complainant has obtained registration of its OOFOS trademarks. The disputed domain name incorporates the Complainant’s trademark and words “outlet store” in additions to the gTLD “.com”. The website at the disputed domain name includes the Complainant’s trademark and logo and imitates the Complainant’s official website. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant and its trademark and that it targeted that trademark.
As regards the use of the disputed domain name, paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.
The conduct of the Respondent falls under the above provisions. The disputed domain name is confusingly similar to the OOFOS trademark of the Complainant. The website to which the disputed domain name resolves, redirects users to a website similar to the official website of the Complainant. Also, products purporting to be under OOFOS trademark are apparently sold and no disclaimer is included regarding the lack of a relationship between the Respondent and the Complainant. The Internet users will likely be confused as to the source of the products sold on such website.
In the Panel’s view, the circumstances of the case represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.
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,
Mihaela Maravela
Sole Panelist
Date: December 29, 2021