DECISION

H.H. Brown Shoe Company, Inc. v. Acme a/k/a Povidence Shawn

Claim Number: FA0310000203900

PARTIES

Complainant is H.H. Brown Shoe Company, Inc. (“Complainant”) represented by Gene S. Winter of St. Onge, Steward, Johnston & Reens, LLC, 986 Bedford St., Stamford, CT, 06905-5619. Respondent is Acme a/k/a Povidence Shawn, Level 2, 1 Chandos Street, St. Leonards, NSW 2065, Australia (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <acmeboots.com> registered with Fabulous.com Pty Ltd.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 17, 2003; the Forum received a hard copy of the Complaint on October 20, 2003.

On October 19, 2003, Fabulous.com Pty Ltd. confirmed by e-mail to the Forum that the domain name <acmeboots.com> is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On October 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 13, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@acmeboots.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 21, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <acmeboots.com> domain name is confusingly similar to Complainant’s ACME mark.

2. Respondent does not have any rights or legitimate interests in the <acmeboots.com> domain name.

3. Respondent registered and used the <acmeboots.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds a number of trademark registrations for the ACME mark, including United States Patent and Trademark Office Reg. No. 555,056 (registered on February 19, 1952) in relation to men’s, women’s and children’s boots and Australian Trademark Reg. No. 476,952 (registered on November 20, 1987) in relation to footwear, including boots, shoes and slippers.

Respondent registered the <acmeboots.com> domain name on September 29, 2000. Respondent is using the disputed domain name to redirect Internet traffic to a portal website, which offers a number of goods and services, including, inter alia, links to retailers of Complainant’s goods.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has demonstrated that it has rights in the ACME mark through registration with both the American and Australian trademark authorities. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Complainant argues that Respondent’s <acmeboots.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name appropriates Complainant’s mark and adds the generic or descriptive term “boots” to the end of the mark. The addition of the term “boots” does not sufficiently distinguish the domain name from the mark under Policy ¶ 4(a)(i), because the added term directly relates to Complainant’s business of manufacturing and selling boots. See Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., t/a Geelong City Motors, D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar to the BRAMBLES trademark because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not favored the Panel with a Response in this proceeding. Accordingly, the Panel accepts all reasonable allegations and inferences in the Complaint to be true. See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, based on Respondent’s failure to contest Complainant’s allegations, the Panel presumes Respondent lacks all rights to and legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent is using the <acmeboots.com> domain name to redirect Internet traffic to a portal website, which offers a number of goods and services, including, inter alia, links to retailers of Complainant’s goods. Respondent’s diversionary use of the disputed domain name demonstrates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev a/k/a NA, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

Furthermore, Respondent has proffered no proof and there is no evidence in the record to suggest that Respondent is commonly known by ACME BOOTS or <acmeboots.com>. Therefore, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s unauthorized use of a domain name confusingly similar to Complainant’s ACME mark to divert Internet traffic to a commercial, portal website indicates that the domain name was registered and used to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark, which is evidence of bad faith registration and use with regard to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Moreover, Respondent’s registration and use of the <acmeboots.com> domain name, a domain name comprised of Complainant’s ACME mark and a product manufactured and sold under said mark, suggests that Respondent had actual or constructive knowledge of Complainant’s mark when Respondent registered the disputed domain name. The registration and use of a domain name that incorporates another’s mark, despite actual or constructive knowledge of the mark holder’s rights, evidences registration and use in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <acmeboots.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  December 5, 2003

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