Shoe Zone Limited v. Moniker Privacy Services / DNS Admin
Case No. D2009-0946
1. The Parties
The Complainant is Shoe Zone Limited of Leicestershire, United Kingdom of Great Britain and Northern Ireland, represented by Harvey Ingram LLP, United Kingdom.
The Respondent is DNS Admin of Charlestown, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <shoezone.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2009. On July 14, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On July 14, 2009, Moniker Online Services, LLC 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 July 16, 2009, 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 July 17, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 12, 2009.
The Center appointed Warwick Smith as the sole panelist in this matter on August 19, 2009. 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.
In the absence of a response, the Panel has checked the record to ensure that the Center has discharged its responsibility under the Rules, paragraph 2(a), to notify the Complaint to the Respondent. The Panel is satisfied that the Center has done so.
4. Factual Background
The following facts are taken from the Complainant's uncontested assertions in the Complaint.
The Complainant
The Complainant is a retailer and distributor of footwear throughout Ireland and the United Kingdom.
The Complainant is the registered proprietor of the trademark SHOE ZONE in the United Kingdom, in respect of footwear in international class 25. The mark was registered with effect from October 7, 1999.
The Complainant also holds a Community Trade Mark registration for the same mark, dating from June 19, 2002, including a registration in international class 35 relating to the distribution of footwear, stockings, and similar items.
In addition, the Complainant holds an international registration for its SHOE ZONE mark, in international classes 25 and 35, dating from November 30, 2006.
The Complainant has traded as “Shoezone” from early 2000.
The Domain Name
The Domain Name was originally registered on November 25, 1998. Since then, the ownership of the Domain Name has changed at least twice. In July 2003, the Complainant approached a company called Footstar which was then the registrant of the Domain Name, in an attempt to purchase the Domain Name. (At the time, the Domain Name was being used by Footstar to market its own footwear in the United States.) The Complainant's attempt to purchase was unsuccessful. In 2006, the Complainant again endeavored to purchase the Domain Name, this time from Novus Inc., which had by then become the owner of the Domain Name. (Novus Inc. was operating a website at “www.novusshoes.com”, and it appears to have been operating a genuine shoe-selling business.) The Complainant received no response to its approach to Novus Inc.
The Respondent
It appears that the Respondent became the registrant of the Domain Name at some time after June of 2006, being the last date on which the Complainant says that it attempted to acquire the Domain Name from Novus Inc. Up until May of 2009, there was nothing about the use of the Domain Name which caused the Complainant any concern: in the period between late 2006 and May 2009 the Domain Name simply pointed to a holding page, which provided advertising unrelated to the Complainant's field of business.
In or about May of 2009, the Complainant noted that the Domain Name was pointing to a website which carried advertising for a number of websites operated by the Complainant's direct competitors. These included footwear sellers in the United Kingdom, such as Clarks and Priceless Shoes.
The Complainant attached to the Complaint a recent web page from the website to which the Domain Name resolved (“the Respondent's website”). The page was a fairly typical “landing page”, containing sponsored links to a number of third party websites. Two of the click-on links consisted of the expression “Shoes Zone”, and both of those links pointed to the “Shoes” page on Ebay's United Kingdom website. There was also a link to the website operated by the retailer Jb Williams, a competitor of the Complainant.
The page from the Respondent's website which the Complainant produced contained a 2009 copyright claim by “shoeszone.com”. There was also a click-on link “Inquire about this domain”.
5. Parties' Contentions
A. Complainant
The Complainant contends:
1. The Domain Name is identical to the Complainant's SHOE ZONE mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following facts:
(i) The Respondent has made no genuine attempt to use the Domain Name to sell any goods or services.
(ii) The Complainant has no knowledge of the Respondent being commonly known by the Domain Name.
(iii) The Respondent has been guilty of trademark infringement and passing off.
(iv) The Respondent's registration of the Domain Name is limiting the Complainant's ability to expand its portfolio of registered domain names.
(v) The Respondent is gaining commercial advantage by misleading customers of the Complainant, by diverting them to advertising links of the Complainant's competitors. The average consumer will be confused by the links and the highly distinctive nature of the Complainant's trademark will only increase the likelihood of confusion.
3. The Domain Name was registered and is being used in bad faith. The following matters are evidence of the Respondent's bad faith:
(i) The Respondent has not been making a genuine attempt to use the Domain Name to sell any good or services, or using the Domain Name for any other legitimate purpose. The Respondent's use of the Domain Name infringes the Complainant's United Kingdom and European trademark registrations.
(ii) The Domain Name was registered in order to prevent the Complainant from expanding its business by registering its trading name and trademark in the most popular corresponding domain name.
(iii) The Domain Name was registered primarily for the purpose of disrupting the Complainant's business.
(iv) The fact that the Respondent's website advertises competitor websites and products, demonstrates that the Respondent intended to divert business from the Complainant and cause customer confusion. The Respondent is trading commercially through advertising links and clicks on the competitor websites, from the Complainant's trademark. The average consumer will visit the Respondent's website looking for the Complainant's website, and will instead find links to competitors' websites. That will be damaging to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. What the Complainant must prove – General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(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 has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.”
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint. It is the registered proprietor of the mark SHOE ZONE in the United Kingdom, and it also holds a SHOE ZONE Community Trademark registration.
The Domain Name is identical to that mark (the “.com” suffix is not taken into account in the comparison).
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [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 trade mark or service mark at issue.
“[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, there is no suggestion that the Complainant has authorized the Respondent to use its SHOE ZONE mark. Nor is there any evidence that the Respondent is commonly known by the Domain Name (the copyright claim on the Respondent's website does not provide sufficient evidence to support a “commonly known by” defense under paragraph 4(c)(ii) of the Policy – it simply appears to be a repetition of the Domain Name, and as such provides no evidence of the name by which the Respondent might be known to others).
The Respondent's use of the Domain Name has clearly been a commercial use. The Respondent's website is a fairly typical “landing page” website, which provides sponsored links to third party websites from which the registrant derives click-through revenue every time a site visitor clicks on one of the sponsored links. The use being a commercial use, there is nothing in the evidence to suggest that the Respondent might have a right or legitimate interest under paragraph 4(c)(iii) of the Policy (legitimate noncommercial or fair use, without intent for commercial gain).
The foregoing combination of circumstances provides sufficient prima facie proof that the Respondent has no right or legitimate interest in respect of the Domain Name. In those circumstances, the evidentiary onus shifts to the Respondent to show that it does have some such right or legitimate interest. The Respondent has failed to file any Response, and has therefore failed to discharge that onus. The Complainant must therefore succeed on this part of the Complaint.
For the reasons set out in Section 6D of this decision, and in the absence of any Response, the Panel is also satisfied that the Respondent has not been using the Domain Name in connection with any bona fide offering of goods or services, and nor has it made any demonstrable preparations to do so. In those circumstances there could be no rights or legitimate interests under paragraph 4(c)(i) of the Policy.
The Complainant therefore succeeds on this part of its Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 respondent's] website or location or of a product or service on [the respondent's] website or location.
The Complainant has also proved this part of its Complaint. Registration of a domain name for the purpose of establishing a landing page providing sponsored links to websites operated by a complainant's competitors, is a fairly common instance of the kind of bad faith described at paragraph 4(b)(iv) of the Policy set out above. In this case, a number of the sponsored links are to websites operated by United Kingdom competitors of the Complainant, and the particular Ebay website to which links are provided on the Respondent's website is the website at “www.ebay.co.uk”. The connections with the United Kingdom, and the use of the expression “shoes zone” on the Respondent's website, are sufficient to satisfy this Panel that the Respondent was aware of the Complainant, and in the absence of any contrary explanation from the Respondent the Panel infers that the Respondent has been using the Complainant's mark with the intention of attracting to the Respondent's website Internet users who expect to find a website operated or authorized by the Complainant. The appropriate inference is that the Respondent's intention has been to create that confusion with the Complainant's mark, for the purpose of deriving commercial gain in the form of revenue earned every time a visitor to the Respondent's website clicks on one of the sponsored links to a third party website. The Panel is satisfied that the circumstances fall squarely within paragraph 4(b)(iv) of the Policy.
Two additional factors reinforce the Panel's conclusion that the Respondent has been guilty of bad faith registration and use. First, the Respondent has failed to file any Response. A bona fide respondent, operating a genuine business or carrying on some other legitimate activity through a website at a disputed domain name, could have been expected to file a Response explaining its position. The Respondent has not done so. Secondly, the Respondent's use of the privacy service is at least consistent with bad faith. A respondent's use of a privacy service is likely to cause a complainant some delay while it endeavors to ascertain details of the true respondent to its prospective complaint, and the respondent continues to derive click-through revenue during that period of delay. (The Panel acknowledges that there can also be legitimate reasons for a respondent to use a privacy service, but in the absence of any explanation for its use, the use of the privacy shield provides another pointer to a conclusion, already reached on other grounds, that a respondent's registration and use of a disputed domain name has been in bad faith.).
The Complainant having proved all three elements of paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <shoezone.com> be transferred to the Complainant.
Warwick Smith Sole Panelist
Dated: September 2, 2009
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