WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Na’Ale Naot Agricultural Cooperative Society for Business Ltd., Yaleet, Inc. v. Frances Metzger
Case No. D2018-1383
1. The Parties
The Complainant is Na’Ale Naot Agricultural Cooperative Society for Business Ltd. of Upper Galilee, Israel, Yaleet, Inc. of Melville, New York, United States of America (“United States”), represented by Law Firm of Jack M. Platt, United States.
The Respondent is Frances Metzger of Brooklyn, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <naotshop.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2018. On June 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 22, 2018, 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 June 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2018.
The Center appointed Ian Lowe as the sole panelist in this matter on July 25, 2018. 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
Since at least 1989 the Complainant Na’Ale Naot Agricultural Cooperative Society for Business Ltd (“Naot”) and its predecessors have manufactured footwear in Israel. The Complainant Yaleet, Inc (“Yaleet”) is the exclusive importer and distributor in the United States of Naot footwear and acquired Naot in 2014. Naot and Yaleet are together referred to as the Complainant. The Complainant promotes and sells its footwear products from a website at “www.naot.com”. The <naot.com> domain name was registered in July 1997.
The Complainant is the registered proprietor of a number of trademarks in respect of NAOT (the “Mark”) including United States trademark number 1819009 stylized word NAOT registered on February 1, 1994, Canada trademark number TMA528093 NAOT registered on May 18, 2000, Hong Kong, China trademark number 300118322 NAOT registered on November 27, 2003 and United States trademark number 3363307 NAOT and device registered on January 1, 2008.
The Domain Name was registered on March 20, 2018. At the time of filing of the Complaint, the Domain Name resolved to a website at “www.naotshop.com” (the “Website”) purporting to offer for sale Naot branded footwear and displaying the Mark and the Complainant’s Naot logo. A substantial number of the photographs of footwear on the Website had been copied without authorization from the Complainant’s website. The Domain Name now resolves to a website at “www.naosale.com” having the same features. The “About Us” webpage is headed “NAOT SHOP”.
So far as the Complainant is aware, the Respondent does not have any lawful access to commercial quantities of Naot branded footwear. The Complainant understands from a number of customers that they have ordered goods from the Website but have not received any goods in fulfillment of their orders.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its Mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark 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.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the Mark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its widespread use of the mark over many years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name differs from the trademark only by the addition of the word “shop”. In the view of the Panel, this addition does not detract from the confusing similarity between the Mark and the Domain Name. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. It appears that the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services but for a website purporting to offer Naot branded footwear for sale, without the authority of the Complainant, using unauthorized copies of the Complainant’s photographs of its products and using the Complainant’s Mark and logo. The Complainant has asserted that it does not believe that the Respondent could have any lawful access to commercial quantities of its genuine products and states that customers have reported that orders placed on the Respondent through the Website have not been fulfilled. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds on balance that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In light of the nature of the Domain Name and the use to which the Respondent has put the Domain Name, the Panel is in no doubt that the Respondent had the Complainant and its rights in the NAOT mark in mind when it registered the Domain Name. In the Panel’s view, the obvious inference is that the Respondent registered the Domain Name for commercial gain with a view to taking unfair advantage of the Complainant’s rights in the NAOT mark, by confusing Internet users into believing that the Domain Name was being operated by or authorized by the Complainant for legitimate purposes related to the Complainant’s activities. The Panel considers that this amounts to paradigm bad faith registration and use for the purposes of the Policy.
Accordingly, the Panel finds that the Domain Name has been registered and is being used 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, <naotshop.com> be transferred to the Complainant.
Date: August 6, 2018