WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shoe Cover, Inc. d/b/a ShuBee v. WhoisGuard Protected, WhoisGuard, Inc. / Phuong Nguyen Van

Case No. D2020-3250

1. The Parties

The Complainant is Shoe Cover, Inc. d/b/a ShuBee, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Phuong Nguyen Van, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name, <shoesbee.com> (the “Domain Name”), is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 3, 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 the Complainant on December 4, 2020, 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 amendment to the Complaint on December 6, 2020.

The Center verified that the Complaint, together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2020. The Center received two email communications from a party identifying as the owner of the Domain Name on December 10, 2020, details of which are to be found in Section 4 below. Pursuant to paragraph 6 of the Rules, on December 28, 2020, the Center informed the Parties that it would proceed with the panel appointment process.

The Center appointed Tony Willoughby as the sole panelist in this matter on January 4, 2021. 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 invitation to the Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the underlying registrant as an additional respondent. However, for the purposes of this decision the Panel treats the underlying registrant, Phuong Nguyen Van, as the Respondent and all references herein to the “Respondent” are references to Phuong Nguyen Van.

4. Factual Background

The Complainant is a United States corporation with headquarters in Atlanta, Georgia. It is engaged in the production and sale of protective products, such as shoe covers, gloves, and specialist clothing. It has traded in the United States since 2000 under the business name “Shubee”, a name protected by several trade mark registrations, including, by way of example, the following registrations:

United States Trade Mark Registration No. 4146654 SHUBEE (standard character mark) registered on May 22, 2012 (application filed October 6, 2011) in class 25 for shoe covers and featuring a first use in commerce claim of September 1, 2000.

United States Trade Mark Registration No. 4196832 SHU [design of a bee] BEE (design plus words mark) registered on August 28, 2012 (application filed June 12, 2011) in class 25 for coveralls; uniforms and featuring a first use in commerce claim of September 1, 2000. The description of the mark featuring on the United States Patent and Trademark Office website is as follows: “The color(s) white, yellow, black and blue is/are claimed as a feature of the mark. The mark consists of the terms ‘SHU’ and ‘BEE’ written in black letters with a white outline and in between the design of a bee with a black face and black antennae, black wings with light yellow lines, black arms and black legs, a yellow and black striped body with blue shoe covers outline in black, and a yellow nose and yellow circles around the eyes.”

The Complainant trades online through its website connected to the domain name, <shubee.com>, which it registered on April 25, 2000.

The Domain Name was registered on June 1, 2020, and is connected to an active website offering shoes for sale. The homepage has a headline banner featuring text indicating that it is an online shoe store for men and women capable of shipping worldwide. It also features a logo comprising the words “shoes” (in yellow upper-case lettering with a white outline) and “bee” (in black upper-case lettering with a white outline) either side of a design of a bee coloured orange, black, and white. At the foot of the page is a copyright notice reading “Copyright 2020 Ó UX Themes”.

On August 24, 2020, the Complainant received a telephone call from a lady enquiring about an order that she had placed for some shoes, the shoes arrived,¹ but in the wrong size and she was calling to try and rectify the problem. It transpired that she had placed the order on the website connected to the Domain Name, but could not find a contact number on that website and called the Complainant having found the Complainant’s telephone number by way of an Internet search. In the course of the call, she forwarded the email receipt received from the Respondent, from which it became apparent that she had confused the Respondent with the Complainant.

On December 10, 2020, an individual identifying himself as the owner of the Domain Name emailed the Center via the email address “shoesbee.com@[...].com” in the following terms:

“Hello support, I have received 1 letter about my domain claim, shoesbee.com.

I have read but do not understand in detail, please explain to me. Who is the complainant?

What have I violated? How do I deal with it?”

The Center responded the same day, confirming that a complaint had been filed in respect of the Domain Name, informing him of the due date for the Response, and pointing him to the guidelines on the Center’s website designed to assist respondents.

Later the same day, he replied:

“Hi friend. Please tell me what information I need to provide? I bought this domain at namecheap.com. It is unique, I have bought it for a long time. It belongs to me. Please see the information I registered.”

Attached to the email was a print out from the Registrar’s database confirming that the Domain Name has been locked pending this Proceeding and that the Domain Name was registered on June 1, 2020.

The Panel believes it likely on the balance of probabilities that the author of those emails is, as he claims, the registrant of the Domain Name, i.e. the Respondent. Any references herein to the Respondent’s communications will be in reference to the above-quoted emails.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s registered SHUBEE trade marks (see Section 4 above); that the Respondent has no rights or legitimate interests in respect of the Domain Name; and, that the Domain Name has been registered and is being used in bad faith within the meaning of inter alia paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.

B. Respondent

The Respondent has not responded to the Complainant’s contentions. However, his emails to the Center, which are quoted in Section 4 above, reflect that he has received notification of the Complaint.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the 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.

B. Identical or Confusingly Similar

The Domain Name comprises the words “shoes” and “bee” and the generic “.com” Top-Level Domain identifier.

Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:

“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

Phonetically, the Domain Name is substantially identical to the Complainant’s SHUBEE registered trade mark and, visually, the Complainant’s SHUBEE registered trade mark is readily recognizable in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Complainant points to the non-exhaustive list of circumstances set out in paragraph 4(c) of the Policy, any of which, if found by the Panel to be present, shall demonstrate rights or legitimate interests for the purposes of this element of the Policy. The Complainant contends that none of them is applicable. The Complainant contends that the Respondent registered the Domain Name with knowledge of the Complainant and in order to disrupt the Complainant’s business and to attract Internet users for commercial gain.

If the Complainant’s contentions are well-founded, the Respondent’s use of the Domain Name cannot be anything other than a bad faith use and cannot give rise to rights or legitimate interests in respect of the Domain Name in the hands of the Respondent.

Powerful support for the Complainant’s case is to be found in the design of the logo used by the Respondent described in Section 4 above, which features obvious similarities to the Complainant’s logo (also described in Section 4 above), which are unlikely, in the view of the Panel, to have been coincidental. Further support for the Complainant’s case is to be found in the evidence described in Section 4 above relating to the lady who contacted the Complainant in the belief that she was contacting the Respondent through whose website she had made a purchase. While it is not clear that she made her purchase in that mistaken belief, her subsequent approach to the Complainant underlines the potential for confusion.

The Panel is satisfied that the Complainant has made out a prima facie case under this element of the Policy; in other words, a case calling for an answer from the Respondent.

The Respondent, despite having been alerted by the Center to the guidance for respondents to be found on the Center’s website, has chosen not to answer the Complainant’s contentions. The Panel concludes on the balance of probabilities that the Respondent has no answer to the Complainant’s contentions and finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

By the same reasoning the Panel finds on the balance of probabilities that the Respondent registered the Domain Name for the purpose for which he has been using it, namely to attract business to his website on the back of the reputation and goodwill associated with the Complainant’s SHUBEE trade mark by using a web address (“www.shoesbee.com”) confusingly similar to the web address for Complainant’s online store (“www.shubee.com”).

Paragraph 4(b)(iv) of the Policy provides that registration of a domain name for the purpose of using it to attract Internet users to the registrant’s website for commercial gain by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site constitutes bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy.

The Panel has found that the Domain Name is confusingly similar to the Complainant’s SHUBEE registered trade mark. The Panel has accepted the Complainant’s unchallenged contention that the Respondent intentionally selected the Domain Name for its confusing similarity to the Complainant’s SHUBEE registered trade mark and <shubee.com> domain name. The use that the Respondent has made of the Domain Name as described in section 4 above has clearly been a use for commercial gain in a business area, the sale of shoes, which is not too distant from sale of shoe covers, a major part of the Complainant’s field of activity. Internet user confusion based upon the similarity of the Domain Name with both the Complainant’s SHUBEE registered trade mark and its <shubee.com> domain name lies at the heart of the Respondent’s enterprise. The two businesses are not in direct competition with one another, but the Respondent is likely, in the view of the Panel, to benefit from any perceived association with the Complainant, the other side of the coin being that any dissatisfaction with the performance of the Respondent is likely to work to the disadvantage of the Complainant.

The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph s 4(b)(iv) and 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, <shoesbee.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: January 6, 2021

¹ This information the Panel has taken from the recording of the telephone conversation exhibited as Annex 15 to the Complaint. The Complaint states that the shoes never arrived, but the Panel believes Annex 15 to be a more reliable account.