Complainant is Oofos, Inc., United States of America (“United States”), represented by Sunstein LLP, United States.
Respondent is Name Redacted1.
The disputed domain name <oofosshoes.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2020. On September 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 8, 2020, 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 Complainant on September 9, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 14, 2020.
The Center verified that the Complaint 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 Respondent of the Complaint, and the proceedings commenced on September 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 6, 2020.
The Center appointed Badgley, Robert A. as the sole panelist in this matter on October 7, 2020. 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.
Complainant manufactures footwear under the trademark OOFOS, a mark it has used since 2011. Complainant holds more than a dozen registrations for the trademark OOFOS, including United States Patent and Trademark Office (“USPTO”) Reg. No. 4,140,410, registered on May 8, 2012, and USPTO Reg. No. 5,576,699 registered on October 2, 2018.
The Domain Name was registered on August 26, 2020. The Domain Name resolves to a website offering for sale various shoes, including Complainant’s OOFOS shoes and the shoes of at least one competing shoe company. Complainant states that it has never licensed or otherwise authorized Respondent to use its OOFOS mark, in a domain name or otherwise.
According to the Complainant, Complainant attempted to contact Respondent, but reached a third party who claimed that her identity had been improperly used to register the Domain Name.
Complainant asserts that it has established each element required for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel concludes that Complainant has rights in the trademark OOFOS through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to the OOFOS mark. The mark is clearly recognizable within the Domain Name. The Domain Name incorporates the OOFOS mark in its entirety and adds the dictionary word “shoes”. The additional word does not prevent a finding of confusing similarity between the mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate or prove her bona fides vis-à-vis the Domain Name. Indeed, the undisputed record here reflects that the Domain Name was registered by an identity thief using the personal details of a third party without authorization.
Complainant has established Policy paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Name in bad faith. On the undisputed record before the Panel, someone registered the Domain Name using the personal details of a third party without authorization and with clear knowledge of the OOFOS trademark. The fact that the Domain Name contains the word “shoes” – the very product Complainant sells under its distinctive OOFOS trademark – leaves no doubt that the registrant of the Domain Name was targeting Complainant’s mark.
As respects bad faith use, the above-quoted Policy paragraph 4(b)(iv) clearly applies here. The website to which the Domain Name resolves offers to sell footwear to the public – including shoes made by one or more competitors of Complainant.
Complainant has established Policy paragraph 4(a)(iii).
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 <oofosshoes.com> be transferred to Complainant.
Robert A. Badgley
Date: October 10, 2020
1Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
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