The Complainant is Crocs, Inc. of Niwot, Colorado, United States of America (“USA” or “US”), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, USA / Gail Shepey of New York, USA represented by Nino Caridi Law, P.C., USA.
The disputed domain name <crocseyewear.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2017. On March 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 23, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 27, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on March 27, 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 March 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2017. On April 14, 2017, the Respondent requested an extension to file a Response. On April 18, 2017, the Center granted the automatic 4-day extension as provided in paragraph 5(b) of the Rules. The due date for Response was April 21, 2017. The Response was filed with the Center on April 21, 2017. Additionally, on April 24, 2017, the Complainant submitted a Supplemental Filing.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 3, 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, incorporated under the laws of Delaware, USA and headquartered in the State of Colorado, USA, has been manufacturing and distributing molded casual footwear for women, men, and children under the CROCS brand since 2002, selling more than 350 million pairs of shoes in more than 90 countries. The Complainant also offers accessories including eyewear (sunglasses) with the CROCS brand. The record includes evidence of extensive online, print media, and broadcast advertising of the CROCS brand in the US and other countries antedating the registration of the Domain Name in 2011. The Complainant operates a commercial website at “www.crocs.com”.
The Complainant holds the following relevant trademark registrations:
|
Mark |
Jurisdiction |
Registration Number |
Registration Date |
|
CROCS |
Canada |
TMA675686 |
October 26, 2006 |
|
CROCS |
USA |
3836415 |
August 24, 2010 |
|
CROCS |
USA |
4179863 |
July 24, 2012 |
|
CROCS |
USA |
4230390 |
October 23, 2012 |
The Domain Name was registered on February 17, 2011, in the name of a domain privacy service. Following notice of the Complaint in this proceeding, the Registrar identified the registrant as the Respondent Gail Shepey, an individual in the State of New York, USA. Ms. Shepey, who is represented by counsel and who submitted a Response, will hereafter be referred to as the Respondent in this Decision. The Respondent, according to her Declaration in the Response, is an entrepreneur who registered the Domain Name when she was planning to create a line of sunglasses and accessories styled to resemble a crocodile’s eyes.
The Domain Name does not resolve to an active website, and according to the Respondent it never has. The Domain Name presents visitors only with a message that “This site is not currently available.”
The Complainant asserts that the Domain Name is confusingly similar to its “well known and famous” CROCS trademark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant infers that the Respondent registered and used the Domain Name in bad faith by acquiring the Domain Name to sell it for an excessive price to the Complainant, by depriving the Complainant of a domain name corresponding to its trademark, and by passively holding a Domain Name that it could not plausibly use without infringing the Complainant’s well-established trademark rights.
The Respondent claims a legitimate interest in using the Domain Name for its generic sense in referring to crocodiles, as she meant to produce crocodile-style sunglasses. The Respondent denies any intent to disrupt the Complainant’s business, deprive it of a domain name corresponding to its trademark, or create confusion as to source or affiliation. She also points out that she never developed a website using the Domain Name and argues that passive holding alone is not evidence of bad faith.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, and cases cited therein.
The Complainant’s Supplemental Filing argues that the Response includes insufficient evidence of legitimate interests and good faith. The Panel does not find it necessary or appropriate to consider a supplemental filing to assess the weight of the Respondent’s evidence.
The Supplemental Filing also submits that the Complainant recently learned that the Respondent has engaged in a pattern of registering domain names based on third-party trademarks. The Complainant could not have investigated this possibility before filing the original UDRP Complaint in this proceeding, because the Domain Name registration was initially executed through a domain privacy service, and the Respondent was only identified after the Complaint was served on the Registrar. However, the Complainant could have investigated the Respondent’s domain name history before filing the amended Complaint.
In any event, the Panel does not find this evidence dispositive and is not disposed to delay the proceedings by taking the Supplemental Filing into account and giving the Respondent an opportunity to reply.
The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. WIPO Overview 2.0, paragraph 1.2.
The Complainant uses CROCS as a registered trademark, and the Domain Name incorporates this mark in its entirety. The addition of the dictionary word “eyewear” in the Domain Name does not avoid confusion, especially because the Complainant itself offers CROCS-branded eyewear.
In these circumstances, the Panel finds confusing similarity and concludes that the first element of the Complaint has been established.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the 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 Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the 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 Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Complainant has demonstrated trademark rights and confusing similarity, and it is undisputed that the Respondent was aware of the Complainant’s trademark and was not authorized to use it. This is sufficient for a prima facie case. The Respondent does not claim a business name corresponding to the Domain Name or rights in a business name or mark corresponding to the Domain Name, but rather a legitimate interest in the Domain Name for its descriptive value in referring to the appearance of crocodile eyes. However, the Respondent has no corresponding business name or mark; the Respondent has not actually made use of the Domain Name in connection with a business of selling crocodile-style eyewear; and the Response includes no evidence of “demonstrable preparations” for such use in the six years since the Respondent registered the Domain Name.
The Panel finds, therefore, that the Respondent has not demonstrated rights or legitimate interests in the Domain Name and that the second element of the Complaint has been established.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith” (in which “you” refers to the registrant of the domain name):
(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 web site 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 your web site or location or of a product or service on your web site or location.
The Complainant cites the first two of these and also cites decisions following Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 on the “passive holding” doctrine, where bad faith may be found when a domain name is not used for an active website but where there appears to be no plausible, legitimate, non-infringing potential use of the domain name. See WIPO Overview 2.0, paragraph 3.2.
The two Policy paragraphs cited by the Complainant are not compelling descriptions of the facts in this proceeding. The record does not indicate that the Respondent ever approached the Complainant about selling the Domain Name, despite holding it for more than six years. And the Complainant has a simple domain name corresponding to its trademark, which it was already using before the Respondent registered the Domain Name at issue here.
The “passive holding” argument is a better fit. It applies in cases where the disputed domain name is identical or confusingly similar to a well-known trademark and, although it has not yet been used for an active website, there appears to be no plausible legitimate use for the domain name. WIPO Overview 2.0, paragraph 3.2. That is the case here.
The Respondent does not dispute that the CROCS mark is widely known and well-established, and in her Declaration the Respondent acknowledges that she was aware of the Complainant’s mark at the time she registered the Domain Name. She says she did not think there would be confusion, however, because “I only knew of the brand ‘Crocs’ as a producer of footwear.” As it happens, the Respondent was mistaken in her belief that the Complainant’s trademark did not extend to eyewear, but even if that had not been true in 2011, it would not have avoided the potential confusion that the Domain Name would have engendered because of the likelihood that Internet users would associate the Domain Name with the well-known CROCS mark. The probability is that many Internet users would be misguided, at least initially, to the commercial advantage of the Respondent, whether she eventually developed a website associated with the Domain Name, used it for advertising, or sold it to a third party.
“Crocs” is not a common, generic word in English, but it is a well-known brand, as the Respondent understood. The Panel considers it more likely than not that the Respondent selected the Domain Name with reference to the well-known trademark, perhaps in the naïve belief that there was no trademark transgression as long as she did not sell shoes. But the choice likely reflects an attempt to exploit the drawing power of a valuable and distinctive trademark. As in Telstra, it is difficult to see how the Respondent could make a legitimate, non-infringing use of the Domain Name, and the Respondent has not demonstrated such a use. Accordingly, the Panel finds passive holding that constitutes bad faith for purposes of the Policy.
The Panel concludes that the third element of the Complaint has been established.
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 <crocseyewear.com> be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: May 17, 2017