WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calzados Hergar, S.A. v. Song Qiuxiang
Case No. D2017-0245
1. The Parties
The Complainant is Calzados Hergar, S.A. of Arnedo, La Rioja, Spain, represented by Pe Enterprise, SL, Spain.
The Respondent is Song Qiuxiang of Luohe, Henan, China.
2. The Domain Name and Registrar
The disputed domain name <callaghan-shoes.com> (“Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2017. On February 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 9, 2017, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2017.
The Center appointed Tee Jim Tan, S.C. as the sole panelist in this matter on March 31, 2017. 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 public limited company registered under Spanish Law. It is the proprietor of the following trademark registrations for the word mark “CALLAGHAN” (the “Mark”) in respect of footwear:
(1) Spanish Trademark No. 1 233 736;
(2) Spanish Trademark No. 1 946 044; and
(3) European Union Trademark No. 1 131 580, registered on May 25, 2000.
The Complainant has an official website incorporating the Mark: “www.callaghan.es”.
The Respondent is the registrant of the Domain Name at which the website “www.callaghan-shoes.com” is located. The Domain Name resolves to a website selling footwear (the “Website”). The Domain Name was registered on September 7, 2016.
5. Parties’ Contentions
The Complainant contends as follows:
(1) It has rights in the Mark and the Domain Name is identical or confusingly similar to the Mark, being aurally, graphically, and conceptually identical to the Mark with the removal of the term “shoes”.
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name because:
(a) there is no evidence of 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;
(b) there is no evidence that the Respondent has ever been commonly known by the Domain Name;
(c) the Respondent is not making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Mark at issue. In fact, the Respondent’s main activity on the Website comprises pretending to be the Complainant by selling footwear, which is likely to be counterfeit footwear;
(d) the Respondent is neither licensed nor authorized to use the Domain Name; and
(e) the Respondent is not a distributor of the Complainant nor does it have any kind of commercial relationship with the Complainant.
(3) The Domain Name was registered and is being used in bad faith because the main activity of the Respondent comprises offering counterfeit “Callaghan” footwear by making users believe that the Respondent is either the Complainant itself or the Complainant’s official distributor or agent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to succeed in its Complaint:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint.
A. Identical or Confusingly Similar
The Complainant has furnished evidence of its trademark registrations in Spain and in the European Union concerning the Mark in respect of footwear. Based on the evidence, the Panel is satisfied that the Complainant has rights in the Mark.
The Panel notes that the Domain Name incorporates the Mark in its entirety, with the addition of “-shoes.com” after the Mark.
The consensus view in previous UDRP panel decisions is that for the purposes of determining confusing similarity under paragraph 4(a) of the Policy, the generic Top-Level Domain (“gTLD”) suffix (“.com” in this particular instance) should be disregarded except where the applicable top-level suffix itself forms part of the trademark in question. The Panel agrees with this view as the exception does not apply in the present case.
Past UDRP decisions also suggest that common and descriptive terms should be disregarded in determining whether a domain name is confusingly similar to a trademark in which the Complainant has rights.
For instance, in Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406, it was held that the mere addition of the word “-online” in the disputed domain name, which otherwise fully incorporated the complainant’s DIXONS mark, was insufficient to distinguish the disputed domain name and stop it from being confusingly similar to the complainant’s mark.
Also, in SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792, the panel therein held that the “the mere addition of the common word ‘free’” after the complainant’s MYHOSTING mark in the disputed domain name was insufficient to prevent the disputed domain name from being confusingly similar to the complainant’s mark.
This Panel concurs with these past decisions and finds that a mere addition of “-shoes”, which is a common and descriptive word, does not prevent the Domain Name from being confusingly similar to the Complainant’s Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if proven, will lead to a finding that the Respondent has rights or legitimate interests in the Domain Name. The list is reproduced here as follows:
(i) The Respondent is able to demonstrate its use of, or its 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 not acquired any trademark or service marks rights therein; or
(iii) The Respondent makes a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark.
The Panel agrees with the UDRP Panel in Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110 that given the “often impossible task of proving the negative”, the Complainant is generally only required to establish a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
The Panel notes that there has been no evidence to prove any of the circumstances listed in (i) to (iii) above. In fact, the Complainant has sufficiently proven that the Respondent is using the Domain Name commercially, since the Domain Name resolves to the Website, which is an online platform selling footwear that could be counterfeits of the Complainant’s CALLAGHAN footwear. Accordingly, the Panel is satisfied that the Complainant has sufficiently established the prima facie case required, and the burden of proof thus shifts to the Respondent to rebut this prima facie case.
Regrettably, the Respondent has elected not to submit a response and thus cannot be taken to have discharged its burden of proof.
This Panel exercises its rights under paragraph 14(b) of the Rules to “draw such inferences […] as it considers appropriate” if a respondent “does not comply with any provision of or requirement under these Rules” to conclude that the Respondent does not in fact have any legitimate rights or interests in the Domain Name.
Accordingly, this Panel is satisfied that the requirement in paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy outlines four non-exclusive scenarios that evidence bad faith in the registration and use of a domain name:
(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 corresponding domain names, provided that the Respondent has 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 the Respondent’s Website or location.
As mentioned above, the Domain Name resolves to the Website, which is an online platform selling footwear.
The Panel notes that the footwear sold on the Website have similar designs as those shown on the Complainant’s official website, “www.callaghan.es”. It is therefore possible that the footwear could be counterfeit CALLAGHAN footwear.
The Panel further notes that even though it is not a distributor of the Complainant and has no commercial relationship with the Complainant, the Respondent has used the Mark throughout the Website in such a manner as to suggest that it is a distributor of the Complainant or has a commercial relationship with the Complainant. For instance, it has chosen to (a) display the word “Callaghan” in the same typeface as the Mark that is displayed on the Complainant’s website, and (b) capitalize the letter “H” so that the word appears as “CallagHan” on the Website. The colour scheme of the Website, namely red, black and white, is also similar to that of the Complainant’s website.
The Respondent’s commercial behavior, as set out in the preceding paragraphs, strongly evidences an intentional attempt on its part to attract customers to its Website and to mislead the customers to think that the Respondent is the Complainant or is in some way connected or affiliated to the Complainant. This is evidence of bad faith registration and use.
Accordingly, this Panel is satisfied that the bad faith requirement under paragraph 4(a)(iii) of the Policy is satisfied.
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, <callaghan-shoes.com>, be transferred to the Complainant.
Tee Jim Tan, S.C.
Date: April 14, 2017