The Complainant is Cole Haan LLC of New York, New York, United States of America, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Cynthia Oneal of Houston, Texas, United States of America. 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 August 7, 2014. On August 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 2014 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on September 8, 2014.
The Center appointed Dennis A. Foster as the sole panelist in this matter on September 16, 2014. 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, now operating in over thirty countries, has been producing and selling shoes since 1928 under the COLE HAAN trademark. The Complainant has registrations for that mark with the proper authorities in many countries, including with the United States Patent and Trademark Office ("USPTO") (e.g., Registration No 3618399; registered May 12, 2009) and the Chinese State Intellectual Property Office of the P.R.C. ("SIPO") (e.g., Registration No. 6722230; registered September 7, 2010).
The Respondent is the owner of the disputed domain name, , which was registered on June 4, 2013. The disputed domain name is being used to host a website that includes a facsimile of the Complainant's distinctive logo and presents for sale products that compete directly with the Complainant's goods. 5. Parties' Contentions A. Complainant
- The Complainant produces shoes and other forms of apparel and operates in more than thirty countries. The Complainant has used the brand name, "Cole Haan", in connection with its products since 1928. The name is distinctive and well-known worldwide.
- The Complainant has registered the trademark, COLE HAAN, with many authorities throughout the world, including with the USPTO and SIPO. The Complainant also conducts business through a website found at its domain name, , which it registered in 1994.
- The disputed domain name, is identical to the Complainant's COLE HAAN trademark. In making such a comparison, the country code Top-Level Domain ("ccTLD"), ".co", must be disregarded.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has received no permission or license of any kind to use the COLE HAAN mark in a domain name or otherwise. The disputed domain name is used to host a website that is similar in design to the Complainant's own website (e.g. the Complainant's logo, a needle and thread device, is found on the Respondent's website) and offers products that are similar to those offered by the Complainant and appear to be counterfeit.
- The disputed domain name was registered and is being used in bad faith. In using the disputed domain name, the Respondent attempted intentionally to attract Internet users to its website for commercial gain by creating the likelihood of confusion between the name and the Complainant's trademark. Moreover, the Respondent has apparently engaged in numerous and deceptive name and contact information changes with respect to registration of the disputed domain name, a further indication of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraphs 4(a)(i) – (iii) of the Policy, the Panel may find for the Complainant and order a transfer of the disputed domain name, , provided that the Complainant can demonstrate that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In furnishing pertinent evidence (Annexes 5 – 11 to the Complaint) to the Panel of several valid trademark registrations, including with the USPTO and SIPO, the Complainant has established its rights to its COLE HAAN trademark for the purposes of Policy paragraph 4(a)(i). See, Intagent LLC v. Dominor LLC,WIPO Case No. D2008-1878 ("Complainant has demonstrated rights in the service mark INTAGENT based on use in commerce and as evidenced by registration at the USPTO.").
The Panel concludes that the disputed domain name, , is identical to the COLE HAAN mark, as the omission of the space between the trademark terms and the addition of the ccTLD, ".co", provide no distinction between the disputed domain name and the mark. See, New Sioux City Iron Co. v. J.A. Romero,WIPO Case No. D2007-0116 (finding to be confusingly similar to the TOOL DEPOT mark); and Plymouth State College v. Domains, Best Domains,WIPO Case No. D2002-0939 (holding to be identical or confusingly similar to the mark, PLYMOUTH STATE COLLEGE, and stating, "[t]he use of '.com' and the deletion of spaces between the terms by Respondent in this domain name are not material, and of no legal consequence.").
As a consequence, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel observes that the Complainant has successfully demonstrated above the identity between the disputed domain name and the Complainant's COLE HAAN mark. Moreover, the Complainant has asserted that it granted neither permission nor license for the Respondent to use that mark in any manner. Having thus established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, it becomes incumbent upon the Respondent to rebut that case in order to prevail as to this element of the Policy. See, Accor v. Eren Atesmen,WIPO Case No. D2009-0701 ("A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.").
Since the Respondent has failed to put forward any evidence, the Panel shall examine the record to determine whether the Respondent might sustain its case pursuant to paragraph 4(c) of the Policy or otherwise. In doing so, the Panel will accept as true all of the Complainant's reasonable contentions. See, Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443 ("Since the Respondent has not submitted any material and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant.").
The Complainant has contended, and provided supporting evidence (Annex 14 to the Complaint), that the Respondent uses the disputed domain name to host a website that not only offers products that compete directly with the goods produced and sold by the Complainant – some of which appear to be counterfeits of the Complainant's wares – but replicates the Complainant's distinctive needle and thread logo. In keeping with numerous prior Policy panels ruling in similar cases, the Panel concludes that such behavior is inconsistent with either a bona fide offering of goods or services per Policy paragraph 4(c)(i), or legitimate noncommercial or fair use per Policy paragraph 4(c)(iii). See, Farouk Systems, Inc. v. Danial Reed,WIPO Case No. D2009-0880 ("It also appears that Respondent was using the domain name to provide links to third party sites offering hair care products in competition with Complainant or offering counterfeit or unauthorized versions of Complainant's products. Such a use is not legitimate..."). Moreover, even if the wares on offer at the disputed domain name were not counterfeit but were genuine Cole Haan products, this would still not give rise to rights or legitimate interests in the disputed domain name, as nothing on the website accurately discloses the relationship (or lack thereof) between the Respondent and the Complainant. See paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Quite the opposite is true: the use of the Complainant's name and logo on the website imply a relationship between the parties where none exists.
Finally, the Panel discerns no evidence in the record to suggest that the Respondent, Cynthia Oneal, or a company owned by the Respondent, has been commonly known as , which invalidates Policy paragraph 4(c)(ii) as a rationale to support the Respondent's position.
Since the Panel can find nothing in the record to rebut the Complainant's prima facie case, that case must prevail in these proceedings.
Accordingly, the Panel concludes that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As noted in the previous section, the Panel has accepted the Complainant's contention that the disputed domain name is being used in connection with a website that features a replica of the Complainant's logo while offering for sale what appear to be counterfeit versions of the Complainant's products. Use of the fake logo demonstrates clearly the Respondent's intent to use the disputed domain to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent's website with respect to the Complainant's business and trademark. Moreover, it is just as clear that the Respondent intends to achieve commercial gain by offering products on the website that mimic those offered by the Complainant. Having reached these conclusions, the Panel believes that the Respondent has registered and is using the disputed domain name in bad faith per paragraph 4(b)(iv) of the Policy. See, Paul's Boutique Limited v. yang zhi he,WIPO Case No. D2013-0088 ("Panel decisions have held that the offering for sale of counterfeit goods on a web site to which a domain name resolves constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy."); and Moncler S.r.l. v. Sandra Brown,WIPO Case No. D2010-1674 ("The Complainant has asserted that the website linked to the Domain Name offers for sale counterfeit products under the Trademark and this assertion has not been rebutted by the Respondent. In the Panel's view, this is strong evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy.").
Therefore, the Panel finds that the Complainant has shown that the disputed domain name was registered and is being used in bad faith. 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.
Dennis A. Foster
Sole Panelist
Date: September 30, 2014
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