WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vans Inc. v. Micheal
Case No. D2011-2266
1. The Parties
The Complainant is Vans Inc. of Santa Fe Springs, California, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Micheal of New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <vansshoesusa.com> is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2011. On December 23, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 2011, 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. On December 29, 2011, the Center transmitted an email to the parties in both Chinese and English languages regarding the language of proceedings. On December 30, 2011, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 January 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2012.
The Center appointed Douglas Clark as the sole panelist in this matter on February 17, 2012. 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.
Language of Proceedings
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding be in English on the following grounds:
1. The registrant's address is within the United States, where English is the majority language. .
2. The website to which the disputed domain name resolved prior to a take down request was in English and directed to English speakers.
3. The disputed domain name is not an IDN, but instead is an English language domain name.
4. The disputed domain name is hosted in Utah, where English is the majority language.
5. The disputed domain name contains the element "USA", where English is the majority language.
The Complainant argues that these factors show that clearly the Respondent has no problem with English in order to conduct its business in English, so having these proceedings in English will not prejudice the Respondent.
The Respondent has not responded to the Complaint nor to the Complainant’s request that the language of the proceeding shall be in English.
In the circumstances of this case, the Panel determines that English shall be the language of the proceeding. The Respondent has an address in the United States, where English is the official language. The website previously under the disputed domain name was written entirely in English and designed to do business worldwide in English. There can be no doubt that the Respondent is able to handle these proceedings in English.
4. Factual Background
The Complainant is the owner of the following trademark registrations:
United States Registration No. 1,267,262, for the mark VANS, having a registration date of February 14, 1984 and a first use date of February, 1967 and a first use in interstate commerce date in 1969 covering “shoes.”
Chinese Registration No. 1,276,089, for the mark VANS, having a registration date of May 21, 1999 which covers “shoes; clothing.”
The disputed domain name was registered on September 5, 2011.
5. Parties’ Contentions
A.1 Identical or Confusingly Similar
The Complainant submits the disputed domain name is identical or confusingly similar to the Complainant’s VANS mark as it consists of the entirety of the mark and adding the generic elements “shoes” and “usa” (the country from in which the Complainant is located, the market to whom the Respondent directed its website, and the jurisdiction in which the Respondent arranged for hosting of its website). The Complainant relies upon two cases: Société des Produits Nestlé S.A. v. Shuai Nian Qing, WIPO Case No. D2009-0865 (“The addition of the descriptive term “careers” does not affect a finding that the disputed domain name is confusingly similar to the NESTLÉ registered mark. It has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive mark name is to be considered confusingly similar to the mark”); and Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (“Moreover, in this type of combination it is clear that the NESTLÉ trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.”).
A.2 No rights or legitimate interests
The Complainant submits the Respondent has never operated any bona fide or legitimate business under the disputed domain name, and is not making a protected noncommercial or fair use of the disputed domain name. Prior to the host acting on a DMCA take down notice, the disputed domain name resolved to a website which appeared to offer the Complainant’s products for sale, but the products actually sold at that website were most likely merely counterfeit knockoffs of the Complainant’s genuine goods.
The Complainant submits the Respondent is not commonly known as “vansshoesusa.com”. The WhoIs record reveals that the Respondent is commonly known as “Micheal”.
The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the Complainant’s mark. The Complainant relies upon Nokia Corp. v. Nokiagirls.com, WIPO Case No. D2000-0102 (finding absence of license permitting respondent to use complainant’s trademark in domain name evidence of respondent’s illegitimate interests).
A.3 Registered and used in bad faith
Registered in Bad Faith
The Complainant alleges that according to the WhoIs record published by the Registrar, the
Respondent is located in New York, United States, where the Complainant has substantial trademark rights by virtue of United States trademark registrations which pre-exist the registration date of the disputed domain name by decades. Therefore, the Respondent had actual notice or at least constructive notice of the Complainant’s well known mark. The Complainant relies upon XS4ALL Internet B.V. v. Usenet Nomads, WIPO Case No. D2003-0467.
The Complainant further submits that the totality of the circumstances indicate the Respondent knew of the Complainant at the time of registration of the disputed domain name since the disputed domain name is nearly identical to the Complainant’s VANS mark, contains generic terms related to the Complainant’s industry, and is being used in conjunction with the sale of related goods. The Complainant relies upon Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193.
Moreover, the Respondent’s website makes direct reference to the Complainant on its home page. This proves the Respondent’s actual knowledge of the Complainant and its mark.
The Domain Name Has Been Used in Bad Faith
The Complainant submits that the disputed domain name has been used in breach of paragraph 4(b)(iv) of the Policy in that the disputed domain name has been used by the Respondent to intentionally attempt to attract, for commercial gain, Internet users to its 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel agrees with these submissions of the Complainant. This is a case of clear domain name hijacking for the purposes of commercial gain which the UDRP is designed to stop.
A. Identical or Confusingly Similar
The disputed domain name <vansshoesusa.com> is made up of the registered trademark VANS and the generic word “shoes” plus a geographic indicator “usa”. The addition of a generic word and a geographic indicator does not in this case detract from the principal element of the disputed domain name being VANS and accordingly the Panel finds the disputed domain name to be confusingly similar to the registered mark VANS. The first part of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. The use made by the Respondent of the website under the disputed domain name where the Complainant’s trademark features prominently and apparently counterfeit products are sold make it hard to imagine that the Respondent could ever establish any rights or legitimate interests. Clearly, none of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name <vansshoesusa.com> was registered in bad faith and is being used in bad faith.
This case clearly falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“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.”
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 <vansshoesusa.com> be transferred to the Complainant.
Dated: February 22, 2012