WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rack Room Shoes, Inc. v. Jaros Banen

Case No. D2013-2019

1. The Parties

Complainant is Rack Room Shoes, Inc. of Charlotte, North Carolina, United States of America (“U.S.”), represented by Lathrop & Gage LLP, U.S..

Respondent is Jaros Banen of New York, New York, U.S.

2. The Domain Name and Registrar

The disputed domain name <offbroadway-shoes.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2013. On November 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

On December 9, 2013, the Center informed the parties that the language of the registration agreement for the disputed domain name <offbroadway-shoes.com> is Chinese, and invited Complainant to either (i) provide evidence of an agreement between the parties that the proceeding should be conducted in English; (ii) submit the Complaint translated into Chinese; or (iii)submit a request for English to be the language of the proceeding. Respondent was invited to provide comments in light of Complainant’s submission. On December 12, 2013, Complainant confirmed its request, stated in the Complaint, that English be the language of the proceeding. Respondent did not submit any comment on Complainant’s submission.

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 Respondent in both English and Chinese of the Complaint, and the proceeding commenced on December 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 10, 2014.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 23, 2014. 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.

4. Factual Background

Complainant Rack Room Shoes, Inc. (“Rack Room”) is a family footwear retailer founded in 1922. Complainant’s wholly owned subsidiary, Off Broadway Shoes, Inc. (“Off Broadway”) is also a footwear retailer and began doing business in 1922. Complainant, through its wholly-owned subsidiaries, is the owner of various trademarks incorporating OFF BROADWAY (collectively, “the OFF BROADWAY Marks”), including:

- OFF BROADWAY for “shoes” in Class 25, having a first use in commerce date of September 22, 1993 and a registration date of January 17, 1995;

- OFF BROADWAY SHOES for “retail store services featuring footwear and related accessories, namely, socks, belts, handbags, and shoe maintenance and repair products” in Class 35, having a first use in commerce date of January 1, 2008 and a registration date of November 3, 2009;

- OFF BROADWAY SHOES (stylized) for “retail store services featuring footwear and related accessories, namely, socks, belts, handbags, and shoe maintenance and repair products” in Class 35, having a first use in commerce date of January 1, 2008 and a registration date of November 10, 2009;

- OFF BROADWAY SHOE WAREHOUSE for “retail shops featuring footwear and related accessories” in Class 35, having a first use in commerce date of July 1, 1991 and a registration date of July 31, 2012;

- OFF BROADWAY SHOE WAREHOUSE (stylized) for “retail shops featuring footwear and related accessories” in Class 35, having a first use in commerce date of September 22, 1993 and a registration date of January 4, 2005.

Complainant has provided copies of its federal trademark registrations as well as evidence of the current status and ownership thereof.

Presently, Complainant has more than 75 brick and mortar retail locations and a retail website at “www.offbroadwayshoes.com”. Complainant and its affiliated companies have advertised and marketed their footwear and accessories under the OFF BROADWAY Marks. Complainant has provided representative advertising materials. Complainant’s estimated sales for 2013 were USD 200 million. The Panel accepts that Complainant’s OFF BROADWAY Marks are well-known.

The disputed domain name <offbroadway-shoes.com> was registered on August 1, 2013.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to Complainant’s OFF BROADWAY Marks. Respondent has no legal rights to or legitimate interests in the disputed domain name. Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 . Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be transferred:

i. the disputed domain name registered by Respondent 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 disputed domain name; and

iii. the disputed domain name has been registered and is being used in bad faith.

A. Preliminary Matters

Language of Proceeding

According to the Registrar, the language of the registration agreement for the disputed domain name <offbroadway-shoes.com> is Chinese. Complainant has requested that English be the language of the proceeding, since it conducts business largely in English and would be disadvantaged by having to conduct the instant proceeding in Chinese. Respondent has not submitted any comments on Complainant’s request. Upon review of available record, it is clear that the disputed domain name resolves to a website in English. Taking the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceeding. Translation of the Complaint and other materials would cause unnecessary cost and delay.

B. Identical or Confusingly Similar

To prove this element, Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to Complainant’s trademark.

There is no doubt that Complainant has rights in the OFF BROADWAY Marks. The record shows Complainant owned trademark rights in the OFF BROADWAY Marks, including the OFF BROADWAY SHOES Mark, prior to the disputed domain name registration in August, 2013. The disputed domain name incorporates the OFF BROADWAY SHOES Mark in its entirety with the inclusion of a dash between the terms “offbroadway” and “shoes”. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.” Research in Motion Ltd. v. One Star Global LLC, WIPO Case No. D2009-0227. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446. Seealso Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423. Thus, the disputed domain name is identical to Complainant’s OFF BROADWAY SHOES Mark.

It is therefore likely that consumers would be confused by the use of the trademark in the disputed domain name. Further, Complainant has submitted evidence of actual consumer confusion. In light of the above, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

C. Rights or Legitimate Interests

The Panel finds there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interests in the term “Off Broadway Shoes”. Complainant is required to make out an initial prima facie case that Respondent lacks rights or legitimate interests. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d. d. v. WACHEM do.o. WIPO Case No. D2004-0110. The Panel finds that Complainant has successfully presented a prima facie case which Respondent has not rebutted. Respondent has filed no response. There have been no other communications from Respondent in connection with this case. Without a response, there is nothing in the case file that indicates that Respondent has rights or legitimate interests in the disputed domain name. Further, as discussed below, the Panel also finds that Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that Respondent is commonly known by the disputed domain name.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the 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 you have engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.

It is unrebutted that Respondent is using a confusingly similar domain name to Complainant’s OFF BROADWAY Marks, in particular the OFF BROADWAY SHOES Mark, in connection with a retail website that is offering competing services to those of Complainant. Further, as established above, there is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant or that Respondent has any other rights or legitimate interests in the terms “Off Broadway Shoes”.

Complainant submits that Respondent’s purpose in registering the disputed domain name is to capitalize on the reputation of Complainant’s OFF BROADWAY Marks by diverting Internet users seeking footwear under Complainant’s OFF BROADWAY Marks and through Complainant’s Off Broadway retail outlets to Respondent’s own website where consumers may purchase competing goods falsely offered and sold under the OFF BROADWAY Marks. Complainant further submits that, due to its extensive advertising and marketing under the OFF BROADWAY Marks since well before the registration of the disputed domain name, Respondent was aware of the OFF BROADWAY Marks at the time of the registration. The Panel concurs.

Thus, on the record before it the Panel finds that Respondent is using the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 disputed domain name <offbroadway-shoes.com> be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: January 30, 2014