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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Payless Shoesource Worldwide Inc. v. Premier Success, Sebastian Cork

Case No. D2014-0713

1. The Parties

The Complainant is Payless Shoesource Worldwide Inc. of Topeka, Kansas, United States of America, represented by Wiley Rein LLP, United States of America.

The Respondent is Premier Success, Sebastian Cork of Basingstoke, Hampshire, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <fionishoes.net> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2014. On May 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 6, 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 May 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2014. On June 6, 2014 an email was received from the Respondent. The Center acknowledged receipt of the email the same day.

The Center appointed Nicholas Smith as the sole panelist in this matter on June 19, 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.

On June 25, 2014, the complainant submitted a Supplemental Filing. In the discretion under paragraph 10 and 12 of the Rules, the Panel has decided not to accept this submission.

4. Factual Background

The Complainant is a specialist family footwear retailer. Founded in 1956 in Topeka, Kansas, the Complainant has a network of footwear stores in the United States, Canada, Central America and South America. The Complainant, as of 2012, operated 4,107 stores in the Americas and 174 franchised stores located in the Middle East, Asia and Eastern Europe. The Complainant also maintains an online store at “www.payless.com”.

The Complainant is the owner of a number of trademarks consisting of the word FIONI (the “FIONI Mark”), in jurisdictions across the world, including the United States (since 2010), Canada (since 1998), Mexico, Argentina and Japan. The Complainant has been using the FIONI Mark since 1999 on certain classic dress and special occasion style shoes for women.

The Domain Name <fionishoes.net> was registered on January 13, 2013. The Domain Name is currently suspended but prior to the commencement of the proceeding resolved to a website (the “Respondent’s Website”), which featured photos of shoes and the heading “Fioni Shoes and some basic facts you might like to know”. The Respondent’s Website contained a selection of information about the Complainant’s Fioni Shoes, a form where visitors could submit their details and a series of what appear to be pay-per-click advertisements. There is no clear disclaimer that the Respondent’s Website was not associated with the Complainant and indeed the Respondent’s Website makes reference to the Complainant, noting that “You can buy this style of shoe in shopping stores such as Payless ShoeSource Shoes for Women”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s FIONI Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the FIONI Mark. It owns trade mark registrations for the FIONI Mark in various jurisdictions around the world.

The Domain Name consists of the FIONI Mark and the word “shoes” which is a generic noun that does not distinguish the Domain Name from the Complainant’s FIONI Mark. The Domain Name is confusingly similar to the FIONI Mark as the dominant part of the Domain Name is the Complainant’s FIONI Mark.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not affiliated with the Complainant in any way or is commonly known by reference to the FIONI Mark. The Complainant has not authorized the Respondent to use and register the FIONI Mark or to seek the registration of any domain name incorporating the FIONI Mark. The Respondent is using the Domain Name to operate a site through which the Respondent displays a falsely legitimate looking website containing “pay-per-click” ads for which the Respondent is presumably being compensated. The Respondent’s Website also appears to be used as part of a phishing scam to entice consumers to disclose personal information. The use of the Domain Name in this manner does not confer a right or legitimate interest on the Respondent.

The Domain Name was registered and is being used in bad faith. The Domain Name was registered with full knowledge of the FIONI Mark. The Domain Name is being used for a website for commercial purposes that take advantage of the reputation of the Complainant’s FIONI Mark. Such use is prima facie evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy or otherwise. The Respondent’s use of the Domain Name is calculated to create confusion with the FIONI Mark and to take advantage of that confusion for financial gain by through receiving income from pay-per-click links and receiving the benefit of the contact details that interested parties provide the Respondent. The Respondent also appears to have engaged in a pattern of conduct of registering domain names involving third party trademarks and using the domain names in bad faith. The Respondent owns 248 domain names including <amazon-kindle.co>, <hilton-hotels.net> and <polaroid.co>, many of whom link to seemingly realistic websites, such as the Respondent’s Website, that actually have no connection with the trade mark holder.

B. Respondent

The Respondent did not submit a formal timely reply to the Complainant’s contentions. Rather on June 6, 2014 the Respondent provided a short email to the Center indicating that it had shut down the website in question and would not be operating a similar website in future or renewing the Domain Name.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the FIONI Mark, having registrations for the FIONI Mark as a trademark around the world and in particular the US and Canada.

The Domain Name consists of the FIONI Mark and the word “shoes”. The addition of a generic noun to a Domain Name that otherwise incorporates a mark in its entirety typically does not prevent a finding of confusing similarity. Furthermore the addition of “shoes”, which describes the products for which the FIONI Mark is applied to, may have the effect of increasing the confusion, as a person viewing the mark may be confused into thinking the Domain Name referred to a site run by the Complainant for their FIONI shoes. The Panel finds that the Domain Name is confusingly similar to the Complainant’s FIONI Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 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.” (Policy, paragraph 4(c))”.

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the FIONI Mark or a mark similar to the FIONI Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial use.

Rather the Respondent is using the Domain Name to operate a website that, without the permission of the Complainant, makes reference to the Complainant (via the use of Complainant’s name and photos of the Complainant’s shoes), and contains text that may have the effect of persuading visitors that the website is associated with the Complainant. The Respondent can be presumed to receive income from such misleading behaviour via pay-per-click advertisements on the Respondent’s Website or through the various additional contact information visitors may provide the Respondent. Such use, being commercial and misleading, is not a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted 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 the respondent’s website or location.

The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the FIONI Mark at the time the Respondent registered of the Domain Name. The Domain Name features the FIONI Mark and the noun “shoes” which describes the goods to which the FIONI Mark is affixed. The Respondent’s Website makes reference to the Complainant (via the use of Complainant’s name and products) on the website. The registration of the Domain Name in awareness of the FIONI Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.

The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the FIONI Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website consisted of a website that refers to the Complainant’s products and makes reference to the Complainant’s FIONI Mark. The only apparent purpose behind the conduct of the Respondent is to gain financial revenue from the presence of the pay-per-click advertisements on the website and gain some other unrelated advantage from acquiring the contact details of people who, upon visiting the Respondent’s Website, consider it a site connected to the Complainant and provide the Respondent with their contact details. It appears both from the Domain Name itself and from the Respondent’s Website that it highly likely that the Respondent has intentionally attempted to attract Internet users to the Respondent’s Website by means of confusion with the FIONI Mark, and received or intended to receive revenue for that activity. The Panel finds that such use amounts to use in bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

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 Domain Name, <fionishoes.net> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: June 27, 2014

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