(U.S. Reg. No 1861882)
(Website logo used by the Complainant)
The Complainant is VANS Inc. of Costa Mesa, California, United States of America ("United States"), represented by SILKA Law AB, Sweden.
The Respondent is Domain Administrator of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom") / Robert Jacky, Walkon Trade Ltd of Brawley, California, United States.
The disputed domain name <vanseoutlet.com> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2017. On September 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2017, 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 October 4, 2017 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 October 4, 2017.
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 October 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2017. The Respondent submitted informal email communications on October 9 and 13, 2017 but did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to the Panel appointment on November 2, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on November 14, 2017. 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 Complainant, founded in 1966, sells action sports clothing, footwear and accessories for men, women, and children. The Complainant has a major online presence online, and operates some 585 retail stores worldwide. The Complainant owns United States trademark registrations for VANS, U.S. Reg. No. 1269201, registered on March 6, 1984; and U.S. Reg. No. 1861882, registered on November 8, 1994. The latter is a stylized mark, depicted below, and used as a logo on the Complainant's website:
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(U.S. Reg. No 1861882) |
(Website logo used by the Complainant) |
The Respondent registered the disputed domain name <vanseoutlet.com> on June 6, 2013, according to the concerned Registrar's WhoIs records. The disputed domain name resolves to a website at "www.vanseoutlet.com", on which footwear products purported to be genuine VANS products are sold at discounted prices. The Respondent's website prominently displays a colorable imitation of the Complainant's stylized VANS mark and logo, as reproduced below.
(Colorable imitation on the Respondent's website)
The Complainant's VANS mark is recognizable in the images of many of the products offered for sale on the Respondent's website. The Complainant reports it has conducted test purchases of products sold on the Respondent's website, which the Complainant' states are "knock offs".
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's VANS mark. According to the Complainant, the addition of the single letter "e" followed by the common or descriptive word "outlet" does not serve to distinguish the confusing similarity of the disputed domain name to the Complainant's mark, and the Complainant maintains that the use of the term "outlet" likely compounds the confusing similarity of the disputed domain name to the Complainant's mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant's VANS mark, and submits that the Respondent has not been commonly known by the disputed domain name. The Complainant further maintains that the use of the disputed domain to sell what are purported to be the Complainant's footwear products (or counterfeit products) constitutes neither use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or other fair use of the disputed domain. The Complainant further asserts the Respondent is operating a phishing website, seeking to collect Internet users' personal information by passing itself off as the Complainant.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, it is evident that the Respondent was aware of the Complainant and the Complainant's VANS mark when registering the disputed domain name. The Complainant submits that the Respondent's unauthorized use of the disputed domain name as described above with knowledge of the Complainant's well-known trademark establishes the Respondent's bad faith.
The Respondent did not reply to the Complainant's contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the disputed domain name <vanseoutlet.com> is confusingly similar to the VANS mark, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name.
In this case, the Complainant's VANS mark is clearly recognizable in the disputed domain name. The addition of the letter "e" followed by the descriptive word "outlet" does not dispel confusing similarity.2 Top Level Domains ("TLDs") generally are disregarded when evaluating the identity or confusing similarity of the complainant's mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.3
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant's VANS mark. The Respondent notwithstanding has registered and used the disputed domain name, which is confusingly similar to the Complainant's mark, to divert Internet users to a website on which it is likely that counterfeit goods are being passed off as the Complainant's genuine VANS products.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the 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 domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.
It is evident from the record that the Respondent was aware of the Complainant and had the Complainant's VANS mark in mind when registering the disputed domain name. The Panel finds that the Respondent registered the disputed domain name in order to exploit and profit from the Complainant's rights in the VANS mark through the creation of Internet user confusion. Considering the overall look and feel of the Respondent's website, including the Respondent's prominent display of the Complainant's VANS logo and mark, Internet users easily could be confused whether the Respondent's website is affiliated with or has the endorsement or sponsorship of the Complainant, or whether the goods being offered on this website are in fact genuine VANS-branded goods. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774. Absent any explanation from the Respondent, and considering the reported results of the Complainant's test purchases, the circumstances reflected in the record before this Panel strongly suggest that counterfeit goods more likely than not are being offered on the Respondent's website.
Paragraph 4(c)(iii) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by providing evidence of "legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the [complainant's] trademark or service mark." However, even were the Panel to assume arguendo that the Respondent's website is offering the Complainant's genuine products as opposed to imitations thereof, the Respondent's use of a domain name is not "fair" in circumstances where the domain name falsely suggests affiliation with the trademark owner. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla, WIPO Case No. D2016-1698. See WIPO Overview 3.0, section 2.5 and cases cited therein.
The Respondent's use of the disputed domain name in the Panel's view reflects an intent to trade on the reputation of the Complainant's mark. Thus, even were the goods offered on the Respondent's website authentic VANS products – which the Panel deems unlikely – the disputed domain name and the Respondent's website falsely suggest to Internet users that the website they have arrived at is affiliated with, sponsored, or endorsed by the Complainant. Such use is not fair, is not legitimate, and does not give rise to rights or legitimate interests.
Having regard to the relevant circumstances in this case, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant's mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the relevant circumstances that the Respondent was aware of the Complainant and had the Complainant's VANS mark in mind when registering the disputed domain name. The record convincingly demonstrates that the Respondent's primary motive in relation to the registration and use of the disputed domain name has been to capitalize on or otherwise take advantage of the Complainant's trademark rights, through the creation of Internet user confusion. In light of all of the foregoing, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <vanseoutlet.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: November 28, 2017
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
2 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
3 The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.