WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Macro Retailing, LLC v. hotsaleqq
Case No. D2014-0902
1. The Parties
The Complainant is Macro Retailing, LLC of Hagerstown, Maryland, United States of America, represented by IP Attorneys Group, LLC, United States of America.
The Respondent is hotsaleqq of Hangzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <supershoes2013.com> (the “Domain Name”) 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 May 28, 2014. On May 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 3, 2014, 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 June 5, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On June 6, 2014, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comments 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 June 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2014.
The Center appointed Karen Fong as the sole panelist in this matter on July 11, 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
The Complainant is a leading retailer of footwear in the United States of America. It operates its retail business under the mark SUPER SHOES which it and its predecessors in title have used since 1955. The Complainant owns the trade mark for SUPER SHOES (“the Trade Mark”) in the USA under trade mark registration number 1,448,966 in class 42. The mark was registered in 1987. The Complainant operates websites connected to the domain names <supershoes.com> and <supershoestogo.com>. These domain names are owned by a sister company who also owns the domain names <supershoes.biz> and <supershoestogo.net>. These two domain names are not being used at the moment.
The Respondent registered the Domain Name on June 25, 2013. The Domain Name was connected to a website which was offering for sale NIKE shoes (“the Website”). The Domain Name also diverted to another “www.vpnshoes.com” which also sold NIKE shoes. The Domain Name does not appear to be active at the moment.
The Complainant’s legal representatives sent a cease and desist letter to the Respondent on November 1, 2014 via email and fax. These were undeliverable.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in an email on June 6, 2014 that the language of the proceeding should be English. The Complainant contends that it is a United States entity fluent only in English and is not familiar with the Chinese language. The Respondent on the other hand is familiar with the English language as evidenced by the Website which is in English.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the mark SUPER SHOES through extensive use and registration that pre date the Domain Name.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. The Domain Name integrates the Complainant’s registered trade mark SUPER SHOES, the numerals “2013” and the generic Top-Level Domain (gTLD) “.com”. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD. Further, the addition of the numerals “2013” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the SUPER SHOES trade mark in the Domain Name.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that 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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant alleges that it has not authorised the Respondent to use its SUPER SHOES trade mark in the Domain Name or any other manner. The Respondent is not commonly known by the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s SUPER SHOES trade mark when it registered the Domain Name. Given the circumstances of this case, the fact that the Domain Name incorporates the Complainant’s trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
With respect to the use of the Domain Name, the Panel observes that the Respondent in using the Website to offer for sale and sell footwear, without being authorized or approved by the Complainant shows a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Websites are and the products sold on them are authorised or endorsed by the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy.
In addition to the circumstances above, the following facts in this case indicate that the Domain Name is being used in bad faith – the Respondent failed to file a response and the Respondent has not given proper contact details when registering the Domain Name. The last point is evidenced from the failure of the Complainant’s legal representatives to successfully contact the Respondent when they sent a cease and desist letter as well as the failure of the Center to be able to deliver the Written Notice in relation to this proceeding. It appears to be impossible to locate “hotsaleqq at Hangzhou, Zhejiang, 318001”.
The Panel also concludes that the actual use of the Domain Name was in bad faith
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, <supershoes2013.com> be transferred to the Complainant.
Date: July 28, 2014