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AllenEdmonds Shoe Corporation v. allenedmunds [2004] GENDND 1358 (14 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AllenEdmonds Shoe Corporation v. allenedmunds

Case No. D2004-0631

1. The Parties

The Complainant is AllenEdmonds Shoe Corporation, of Port Washington, Wisconsin, United States of America.

The Respondent is allenedmunds, of Grand Cayman, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <allenedmunds.com> is registered with Address Creation.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2004. On August 13, 2004, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name(s) at issue. Address Creation transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 31, 2004. In accordance with the Rules, paragraph 5(a), the due date for a Response was September 20, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2004

The Center appointed Edward C. Chiasson Q.C. as the sole panelist in this matter on September 30, 2004. The Panel finds that it was properly constituted. The Panel has submitted a 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

The following information derives from the Complaint.

The Complainant has been the manufacturer and distributor of quality shoes since 1936. The mark ALLEN EDMONDS is a registered trademark in continuous use for men's shoes since 1967. The ALLEN EDMONDS trademark is registered worldwide. The Complainant has advertised and sold its products via the Internet. The domain name <allenedmonds.com> was created on May 27, 1995 under the registrar Network Solutions, Inc..

The Complainant has used its registered mark worldwide for nearly seventy years and has owned and operated its domain name for much of the “internet age” having already used it for over nine years.

The subject domain name links to a page of sponsored links all directed to discount or wholesale shoe distributors. These are competitors of the Complainant.

The Respondent is an Internet company based in Georgetown, Grand Cayman. It registered the domain name in 2002.

The Respondent has no relationship with the Complainant that could justify the use of the Complainant’s mark.

The Respondent's domain name links to a listing of sponsored sites all of which deal in inexpensive or wholesale shoes. The Respondent's domain name does not bear any relationship to these goods besides the relationship created by the Complainant's mark and the goodwill it has created around this mark.

The Complainant attempted contact with the Respondent with a letter on April 19, 2004 via E-mail and airmail delivery. The purpose of the letter was to inform the Respondent of its infringement and the UDRP Policy and Rules and to request the Respondent to cease and desist its current use of the subject domain name. No reply was received.

Respondent

The Respondent did not participate in the proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant relies on its registration and use of the words “ALLEN EDMONDS” and asserts that the subject domain name is confusingly similar in that it differs only by the use of a single letter: “u” instead of “o”.

The Complainant says that there is no relationship between the Respondent and the subject domain name and that this suggests that the subject domain name was registered without intent to use it with a bona fide offering of goods or services, but to be used to divert consumers for commercial gain.

Relying on its long use of its mark, the relationship between it and the subject domain name and the Respondent’s failure to respond to the Complainant’s letter, the Complainant contends that the subject domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in an administrative proceeding the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the words “ALLEN EDMONDS”. The subject domain name differs in no material respect. It simply is a misspelling of the Complainant’s mark with the addition of the gTLD “.com”.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent is not commonly known by the subject domain name. It is not authorized to use the Complainant’s mark. The subject domain name appears to be used to divert customers who are likely to be mislead into thinking that they are dealing with the Complainant.

The fact that the Internet is used to attempt to draw customers away from a competitor is not illegitimate, but using the mark of another to do so is not appropriate. The interest in a domain name used in this fashion is not legitimate.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

A Respondent is not required to participate in a domain name dispute, but if it were to fail to do so, it runs the risk that inferences which flow from the not unreasonable assertions of a complainant will be accepted.

Similarly, a finding that a respondent does not have a legitimate interest in a domain name which is confusingly similar to the mark of another, does not automatically establish bad faith, but the facts which support the finding are relevant to the bad faith inquiry.

In this case, the Complainant has used its mark generally and on the Internet for a considerable time. The Respondent has used the subject domain name in direct competition with the Complainant and has ignored the Complainant’s attempt to resolve this matter. Re-directing a domain name corresponding to the mark of a complainant to a website offering links to competitors of the complainant is evidence of bad faith under paragraph 4(b)(iv) of the Policy. The Respondent’s has failed to provide any evidence to rebut the inference of bad faith that flows from the evidence. The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel concludes that the Complainant has established its case and orders that the domain name <allenedmunds.com> be transferred to the Complainant.

Edward C. Chiasson Q.C.
Sole Panelist

Date: October 14, 2004