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and Mediation Center
Gold Toe Brands Inc. v. Richard Jones
Case No. D2004-0923
1. The Parties
The Complainant is Gold Toe Brands Inc., of New York, New York, United States of America, represented by Davis & Gilbert LLP, United States of America.
The Respondent is Richard Jones, of Toulouse, United States of America.
2. The Domain Names and Registrar
The disputed domain names are <goldtoesocks.com> and <goldtoessocks.com>
(both of which are hereinafter referred to as the “Domain Names”,
both of which are registered with eNom, Inc. of Bellevue, Washington (“eNom”
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2004. On November 5, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On November 5, 2004, eNom 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 November 16, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2004.
The Center appointed James H. Grossman as the Sole
Panelist in this matter on December 16, 2004. 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. At the request of the Panel, the Center granted
the Panel’s request that the time for decision in this matter was extended
from December 30, 2004, until January 12, 2005.
4. Factual Background
The facts (including exhibits submitted by Complainant) demonstrate that, for more than seventy years, Complainant has offered socks to consumers throughout the world under its GOLD TOE trademark. Complainant has a line of sport socks, casual socks, dress socks, support socks, tights and other footwear items. Complainant is the owner through its trademark holding company affiliate GAKM Resources Corporation, of numerous trademark registrations and pending applications for GOLD TOE, for use in connections with socks, footwear and other clothing items (copies of such registration and application records were enclosed with the Complaint). Similarly, Complainant owns domain names that feature its GOLD TOE mark such as <goldtoes.com> and <goldtoepromotions.com>. Complainant uses its domain names to provide information to consumers and retailers about its business. As a result, Complainant alleges it has acquired and enjoys considerable fame, goodwill, and a valuable reputation and that the items with the GOLD TOE name allow consumers and retailers to recognize that those items originate from a single source, namely Complainant.
On the other hand, Respondent does not appear to hold any trademark rights to the Domain Names nor, according to Complainant, does Respondent have any business relationship with Complainant. In fact, the Domain Names are used by Respondent in connection with websites offering a myriad of diverse shopping alternatives including, but not limited to, various brands of socks and clothing, online gaming, debt consolidation and other services and products unrelated to socks.
Complainant became aware of Respondent’s use
of the Domain Names in January 2004. Subsequent thereto, Complainant made a
series of demands on Respondent to cease and desist from use of the Domain Names.
Notwithstanding these demands, Respondent has failed to respond, likely because
the address provided by Respondent to the Registrar is a false address.
5. Parties’ Contentions
1. Complainant alleges that the GOLD TOE name is a
very strong and highly distinctive trademark that uniquely identifies Complainant.
Also, Complainant alleges it is one of the three largest sock companies in the
United States. Complainant argues that the Domain Names are identical or confusingly
similar to Complainant’s GOLD TOE trademark. Complainant, as set forth
above in the Factual Background Section 4 above, has an established brand name
developed over the past seventy years. Complainant alleges that the fact that
the Domain Names wholly incorporate a registered trademark in its entirety and
without alteration is identical or confusingly similar to that trademark and
satisfies the requirements of Paragraph 4(a)(i) of the Policy. Hard Rock
Cafй Int’l v. WW Processing, WIPO
Case No. D2002-0021. Further, Complainant cites authority that where the
domain name combines the trademark with a word “that is descriptive of
the goods offered this further supports a finding of confusing similarity”.
Diageo Brands B.V. v. iVodka.com, WIPO Case
2. Complainant alleges that Respondent has no rights
or legitimate interests in respect of the Domain Names. Among a number of allegations
made by Complainant, perhaps the most salient is that Respondent is not authorized
to sell GOLD TOE brand socks or clothing in that there is no agreement whatsoever
between Complainant and Respondent. To the contrary, according to Complainant,
Respondent is using the Domain Names for a “bait and switch” advertising
campaign pursuant to which Respondent draws consumers to the site and then refers
these consumers to other sites selling a myriad of other goods and services
including other brands of socks and clothing, allegedly to obtain commissions
from other providers. An operator of a shopping portal, Respondent has no legitimate
non-commercial use of these Domain Names, nor any fair use without intent for
commercial gain. Among other cases for its position, Complainant cites Chanel,
Inc v. Colgne Zone, WIPO Case No. D2000-1809.
3. Complainant asserts that Respondent is well aware
that his use of the Domain Names is confusingly similar to Complainant’s
trademark GOLD TOE socks and clothing, which such action is tantamount to bad
faith conduct under Paragraph 4(a)(iii) of the Policy. Sportsman’s
Guide v. JoyRide, WIPO Case No. D2003-0153.
Further, Complainant points out that an internet user reasonably expects the
Domain Names to resolve to a site associated with Complainant and not to a site
operated by an unaffiliated third party retailer. The allegation of bad faith
is exacerbated by Respondent’s failure to respond to Complainant’s
written demands as well as the false contact information provided by Respondent
to the Registrar.
The Respondent did not reply to the Complainant’s
contentions. Further the Center’s attempt to contact Respondent by email
was returned to the Center as undeliverable. Correspondence from the Center
to the contact address provided by Respondent to the Registrar was also returned
to the center by the carrier.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is of the view that Respondent’s use of the Domain Names is
confusingly similar to Complainant’s legitimate use of its trademark GOLD
TOE. In this case Respondent not only uses the trademark but uses it together
with the word “sock” or “socks” thereby further supporting
a finding of confusingly similar. See Diagio Brands B.V. v. iVodka.com,
WIPO Case No. D2004-0627.
B. Rights or Legitimate Interests
The Panel can find no right or legitimate interest by the Respondent in the Domain Names. There appears to be no commercial relationship between Complainant, with its rights to the trademark of the Domain Names, and this Respondent. Nor does it seem that Respondent, had he responded to this Complaint, could allege he was making a legitimate non-commercial use of the Domain Names or a fair use without intent for commercial gain.
C. Registered and Used in Bad Faith
The Panel is in full agreement with the allegations of Complainant as to the
intention by Respondent to pass this site off as one belonging to the legitimate
purveyor of socks carrying the trademark GOLD TOE. Nor is there any doubt that
an Internet user would reasonably expect that the site was owned by an entity
controlled or affiliated with Complainant. The cases cited by Complainant on
this issue support the allegation of bad faith. In addition, the Panel can find
no excuse for Respondent’s having provided a fictitious address to the
Registrar. This is evidenced by correspondence from Complainant as well as from
the Center being returned to the respective senders since there was no such
party at that address.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <goldtoesocks.com> and <goldtoessocks.com> be transferred to the Complainant.
James H. Grossman
Dated: January 7, 2005