Oakley, Inc. v. H intel
Claim Number: FA1207001454892
Complainant is Oakley, Inc. (“Complainant”), represented by Donna W. Sandidge of Sandidge IP, Inc., California, USA. Respondent is H intel (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myfakeoakleysunglasses.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2012; the National Arbitration Forum received payment on July 24, 2012.
On July 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <myfakeoakleysunglasses.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@myfakeoakleysunglasses.com. Also on July 25, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based on the following factual and legal grounds:
A. Background
Complainant’s Trademark Rights in OAKLEY
Oakley, Inc., shall hereinafter be referred to as “Complainant.” Complainant is an internationally-recognized manufacturer, distributor and retailer of sports eyewear, apparel, footwear, accessories and other merchandise, all of which prominently display its famous and internationally-recognized, federally-registered trademarks, such as OAKLEY and various Icon logos. Since its formation in 1975, Complainant has used and registered its marks in the United States and throughout the world.
Specifically in the United States, Complainant has used its OAKLEY mark since as early as 1975. As a result of its long-standing use, Complainant owns common law trademark rights in its OAKLEY mark. Complainant has acquired these rights through continuous, extensive and exclusive use of the mark for over thirty-five years. As a result of such use, customers in the United States and worldwide have come to associate the OAKLEY mark with Complainant’s high quality products. Accordingly, Complainant has developed considerable goodwill in the OAKLEY mark.
In addition to Complainant’s common law rights, Complainant owns numerous United States Trademark Registrations for its OAKLEY mark in connection with eyewear, apparel, footwear, headwear, accessories, and other merchandise. These trademark registrations are as follows:
OAKLEY
Reg. No. 1,519,823
Issued January 10, 1989
OAKLEY
Reg. No. 1,521,599
Issued January 24, 1989
OAKLEY
Reg. No. 1,522,692
Issued January 31, 1989
OAKLEY
Reg. No. 1,552,583
Issued August 22, 1989
OAKLEY
Reg. No. 2,293,046
Issued November 16, 1999
OAKLEY
Reg. No. 2,409,789
Issued December 5, 2000
OAKLEY
Reg. No. 3,153,943
Issued October 10, 2006
OAKLEY
Reg. No. 3,771,517
Issued April 6, 2010
OAKLEY stylized
Reg. No. 1,908,414
Issued August 1, 1995
OAKLEY stylized
Reg. No. 1,980,039
Issued June 11, 1996
OAKLEY stylized
Reg. No. 1,356,297
Issued August 27, 1985
OAKLEY stylized
Reg. No. 1,519,596
Issued January 10, 1989
OAKLEY stylized
Reg. No. 3,143,623
Issued September 12, 2006
OAKLEY stylized
Reg. No. 3,026,623
Issued December 13, 2005
OAKLEY and design
Reg. No. 1,902,660
Issued July 4, 1995
OAKLEY and design
Reg. No. 1,990,262
Issued July 30, 1996
A federal trademark registration is prima facie evidence of the validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark. See (15 U.S.C. §1115; McCarthy on Trademarks and Unfair Competition (hereinafter “McCarthy”) (4th ed.), §19:9). All of Complainant’s sixteen registrations were secured well before Respondent registered its domain name in 2012 and five were issued in or before 1989, twenty-three years before Respondent registered <myfakeoakleysunglasses.com>.
Complainant also owns a number of domain name registrations which wholly incorporate Complainant’s OAKLEY mark, including: (1) oakley.com, (2) oakley.co.uk and, (3) oakley.it. Since their registration, Complainant has used and continues to use these domain names in connection with its various websites, which provide information about Complainant and its products and services as well as offer its products for sale. Complainant’s referenced domain names have been registered and in use since long before Respondent’s registration of <myfakeoakleysunglasses.com> on January 23, 2012, namely: oakley.com (approximately seventeen years prior), oakley.co.uk (over fifteen years prior) and, oakley.it (over ten years prior).
Complainant’s Advertising and Promotion of the OAKLEY Mark
Complainant has used the OAKLEY mark continuously since at least as early as 1975 in connection with the advertising, offering for sale, and sale of its various products in the United States and elsewhere. Complainant’s thirty-six years of uninterrupted use of the OAKLEY trademark have resulted in millions of customers worldwide and billions of dollars in sales. These numbers clearly speak volumes regarding the commercial strength of the OAKLEY trademark, which has been used prominently, continuously and substantially exclusively in connection with Complainant.
The OAKLEY mark is well known and famous and has been for many years. Over these years, Complainant has expended millions of dollars in advertising and promoting its products under its OAKLEY trademark in a variety of media throughout the world, including print, television, and radio advertisements.
Complainant has also advertised its OAKLEY mark through direct mail and on the Internet, including on the website(s) associated with its domain name(s) referenced above. Such advertising reaches a vast range of consumers: by way of example, since Complainant’s www.oakley.com website first launched in 1995, it has received hundreds of millions of visitors seeking information about Complainant’s OAKLEY products.
Complainant has also used its OAKLEY mark in connection with its frequent sponsorship of sporting events, organizations, athletes and teams. For example, Complainant has for years been affiliated with Olympic, professional and amateur athletes in sports such as, baseball, hockey, racing, cycling, volleyball, motocross, golf, snowboarding, skate boarding and, surfing, among others. In addition, Complainant is the official sponsor of the Oakley Learn to Ride event during the Park City, Utah Sundance Film Festival and has sponsored many other sporting events, organizations, and athletes. Prominent use of the OAKLEY mark in connection with these activities and athletes has further enhanced the mark’s recognition and fame.
Complainant’s OAKLEY products are sold exclusively through Complainant’s own retail stores, outlet stores and websites including www.oakley.com, www.oakley.co.uk, www.oakley.it and through Oakley Authorized Dealers. Authorized Dealers include national eyewear specialty stores, such as the Sunglass Hut; national sporting goods retailers such as Dick’s Sporting Goods; national prescription eyewear specialists, such as Lens Crafters; as well as select local eyewear, sporting goods, prescription eyewear and, specialty stores.
Through Complainant’s extensive promotional efforts, advertising expenditures and sponsorship activities, Complainant has been successful in educating the public to associate the OAKLEY l trademark with Complainant’s products since long before 2012, the year of registration of Respondent’s disputed domain name.
UDRP Rule 3(b)(viii).
B. Respondent’s Domain Name is Confusingly Similar to Complainant’s Mark
The trademark on which this Complaint is based is OAKLEY. Complainant’s numerous federal trademark registrations and widespread use, advertising, and promotion of the OAKLEY mark since 1975 sufficiently establish rights in the mark pursuant to UDRP ¶4(a)(i). (Mary’s Futons, Inc. v. Texas Int’l Prop. Assoc., NA NA, FA0706001012059 (Nat. Arb. Forum, Aug. 13, 2007)); see also Expedia, Inc. v. Tan, FA070500991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA0412000384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA07030000932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s domain name <myfakeoakleysunglasses.com> incorporates Complainant’s OAKLEY trademark in its entirety. The addition of the generic terms “my,” “fake” and “sunglasses” does not sufficiently distinguish the domain name from Complaint’s mark. (Juicy Couture, Inc. v. Wang Kunkun et al., FA1005001323092 (Nat. Arb. Forum, June 18, 2010) (finding the addition of the generic term “my” to create the domain name “myjuocycouture.com” insufficient to defeat confusing similarity)). Further the addition of a generic top level domain such as “.com” fails to distinguish the domain from the mark pursuant to UDRP ¶4(a)(i). (American Airlines, Inc. v. Texas Int’l Prop. Assoc., FA 07020000914854 (Nat. Arb. Forum, April 10, 2007)). Accordingly, Respondent’s domain name is confusingly similar to Complainant’s mark.
C. Respondent Has No Rights or Legitimate Interests in the <myfakeoakleysunglasses.com> Domain Name
Complainant’s first use and first registration of its OAKLEY mark predate any use Respondent may have made of <myfakeoakleysunglasses.com> as a trade name, domain name, mark, or common name. Respondent’s <myfakeoakleysunglasses.com> domain was registered on January 23, 2012, more than thirty-five years after Complainant first used, and twenty-five years after Complainant first registered, its OAKLEY mark. Additionally, Complainant registered the domain names and began operating its OAKLEY websites at oakley.com, approximately seventeen years before; oakley.co.uk, over fifteen years before; and, oakley.it over ten years before Respondent registered the domain name in dispute here. In all likelihood, Respondent was aware of Complainant’s domain names and websites associated with the same before it registered the <myfakeoakleysunglasses.com> domain because Complainant’s sites were operational, and thus easily accessible to Respondent, at the time Respondent registered the disputed domain name. Because Complainant’s federal registrations and common law use predate Respondent’s domain name registration, and because the Respondent is charged with constructive knowledge of Complainant’s OAKLEY trademark registrations, Respondent has no proprietary rights, or legitimate interests, in the <myfakeoakleysunglasses.com> domain name.
In addition, Complainant’s OAKLEY mark is well-known and famous and has been for many years. Respondent’s registration of a domain name wholly incorporating a famous mark is not supported by legitimate interests. (Hewlett Packard Co. v. Inversiones HP Milenium C.A., FA0203000105775 (Nat. Arb. Forum, Apr. 12, 2002) (“Furthermore, based on the fame of Complainant’s HP mark it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain name. Any use by Respondent of the <hpmilenium.com> domain name, confusingly similar to the Complainant’s mark…for its own commercial gain…”)).
Respondent also has no proprietary rights or legitimate interest in “my fake Oakley sunglasses” or the domain name <myfakeoakleysunglasses.com> because the Respondent is not using or preparing 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 a legitimate noncommercial or fair use. A review of the website reveals that it prominently displays the OAKLEY trademark and Icon logo and is selling counterfeit sunglasses bearing the OAKLEY mark and Icon logos. Complainant has not authorized or licensed Respondent to manufacture, sell or offer for sale such sunglasses, through the domain or on the website.
Respondent’s use of <myfakeoakleysunglasses.com> to sell counterfeit products bearing Complainant’s marks does not constitute a bona fide offering of goods. (Juicy Couture, Inc.) (where Respondent’s website prominently displayed Complaint’s trademarks and offered “mirror images” of Complainant’s products, the panel found: “Respondent’s use of the <myjuicycouture.com> and <juiceycouturebuy.com> domain names to offer counterfeit versions of Complainant’s products does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also (Hewlett-Packard Co.) (“Respondent’s use of a confusingly similar domain to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy P 4(c)(i).”).
Respondent has no proprietary rights or legitimate interest in “my fake Oakley sunglasses” or the <myfakeoakleysunglasses.com> domain name because Respondent is not commonly known by that name. See Annex K (Skyhawke Techs., LLC v. Texas Int’l Prop. Assoc., FA0705000977213 (Nat. Arb. Forum, June 21, 2007), citing Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969, (Nat. Arb. Forum, Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent…is not commonly known by the name ‘welsfargo’ in any derivation”)); see also (ACE Ltd. v. Texas Int’l Prop. Assoc., FA0707001045124 (Nat. Arb. Forum, Sept. 18, 2007) (finding that Respondent is not commonly known by the disputed domain name and accepting evidence that WHOIS information identifies respondent as “Texas International Property Associates”). In this case, WHOIS information identifies Respondent as H Intel, demonstrating that Respondent is not commonly known by the name “my fake Oakley sunglasses”. Further, Complainant has not authorized or licensed Respondent to use or register a domain name which incorporates Complainant’s OAKLEY mark. see also (adidas AG and adidas Am, Inc. v. Texas Int’l Prop. Assoc. – NA NA, FA1005001322490 (Nat. Arb. Forum June 8, 2010), citing Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent was not commonly known by the domain name in part based upon the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name)).
For the reasons discussed herein, Respondent has no rights or legitimate interests in the disputed domain name.
D. Respondent Registered and Is Using the <myfakeoakleysunglasses.com> Domain Name in Bad Faith
Respondent registered and is using the <myfakeoakleysunglasses.com> domain in bad faith based on the following facts. Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website which Respondent’s domain name resolves, where Respondent presumably obtains commercial benefits through the sale of counterfeit products bearing Complainant’s marks. This constitutes registration and use in bad faith. See (Hewlett-Packard Co.) (“Respondent registered the disputed domain name in order to sell counterfeit versions of Complainant’s products. Therefore, Respondent registered <hpmilenium.com> in order to create a likelihood of confusion as to the source, sponsorship, and affiliation of its domain name and products. This type of behavior is in bad faith pursuant to Policy ¶4(b)(iv).”); see also (Juicy Couture, Inc.) (“The Panel finds this use of the disputed domain names disrupts Complainant’s business and constitutes registration and use in bad faith pursuant to Policy ¶4(b)(iii).
Given the fame of Complaints OAKLEY mark and the fact that Respondent is using the domain name to sell counterfeit versions of Complaint’s products, it is clear that Respondent had knowledge of the OAKLEY mark when it registered the domain name. See (Hewlett- Packard Co.) (“The registration of an infringing domain name despite actual notice is evidence of bad faith.”); see also (Victoria’s Secret et al. v. Sherry Hardin, FA0102000096694 (Nat. Arb. Forum, Mar 31, 2001) (“In light of the notoriety of Complainant’s famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name Registration with actual or constructive knowledge of Complainant’s marks is evidence of bad faith.”).
For the above reasons, Respondent’s registration and use of the domain <myfakeoakleysunglasses.com> is in bad faith.
UDRP Rule 3(b)(ix).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is not 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.
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."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has adequately established its rights in the OAKLEY mark by registering it with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 1,519,823 registered January 10, 1989). Complainant submitted multiple trademark certificates bearing the OAKLEY mark, which all list Complainant as the owner of the registration. Therefore, the Panel concludes Complainant has established rights in the OAKLEY mark under Policy ¶4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant also asserts that Respondent’s <myfakeoakleysunglasses.com> domain name is confusingly similar to Complainant’s OAKLEY mark. Clearly, the addition of the descriptive word “sunglasses” does not adequately distinguish Respondent’s domain from Complainant’s mark. Complainant did not address the issue of whether the phrase “MyFake” to the beginning of the disputed domain name adequately differentiated the disputed domain from Complainant’s mark. This is probably because no cases have been decided that address this issue.
There have been three cases where the domain name included the word “replica” at the end of the domain name, all of which resulted in a finding the disputed domain name was confusingly similar to the related mark without much discussion, eLuxury.com Inc. v WangJunJie, FA1075554 (Nat. Arb. Forum Nov. 30, 2007), Louis Vuitton Malletier S.A., L.L.C. v Iani Derdena, FA1178961 (Nat. Arb. Forum May 29, 2008) and American Express Marketing & Development Corp. v BCR / John Hayes, FA1449262 (Nat. Arb. Forum July 21, 2012). The test under the UDRP is whether the domain name is “identical or confusingly similar”; not whether there is “confusion” nor whether the disputed domain name merely contains Complainant’s mark.
Complainant’s mark and the disputed domain name are not identical; they almost never are. This Panel does not see a confusing similarity between Complainant’s mark and the disputed domain name, see Homer TLC, Inc. v GreenPeople, FA550345 (Nat. Arb. Forum October 25, 2005). Everybody knows what the work “fake” means. The word “fake” appears before the trademark in the domain name. The web site makes it pretty clear these are counterfeit goods. People are going to this web site because they know it isn’t affiliated with Complainant. People are buying these good because the purchasers want to pretend they are Complainant’s goods. While it would seem obvious there is trademark infringement, that is not the test under the UDRP.
The Panel finds Policy ¶4(a)(i) NOT satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the <myfakeoakleysunglasses.com> domain name. Respondent failed to submit any evidence to contradict Complainant’s assertion. The WHOIS information identifies the registrant of the disputed domain name as “H intel.” The Panel concludes Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant also claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <myfakeoakleysunglasses.com> domain name. Respondent’s domain name resolves to a website offering counterfeit versions of Complainant’s sunglasses for sale. Even though Respondent clearly labels the web site in the upper right hand corner with the phrase “Best fake Oakley sunglasses”, this Panel is not willing to concede the sale of counterfeit goods qualifies as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii), respectively. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Selling goods for the first time which use another’s mark without authorization is not a bona fide offering of goods or services.
The Panel finds Policy ¶4(a)(ii) satisfied.
UDRP ¶4(b) provides: Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith [emphasis added]:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
Complainant argues Respondent uses the disputed domain name for its own commercial benefit by confusing Internet users into buying Respondent’s counterfeit goods (¶4(b)(iv)). Complainant states Respondent resolves the disputed domain name to a website offering counterfeit versions of Complainant’s sunglasses for sale. Complainant also claims Respondent benefits commercially by selling these products. There does not seem to be much confusion here…the people visiting this web site know they are buying counterfeit goods. The users of this web site know they are not buying authentic goods and that is why they are using the web site.
There was no evidence Respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for more than Respondent’s out of pocket costs (¶4(b)(i)).
There was no evidence Respondent registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided Respondent engaged in a pattern of such conduct. There was no evidence of a pattern here and Complainant has registered a number of domain names which wholly incorporate Complainant’s OAKLEY mark, including: (1) oakley.com, (2) oakley.co.uk and, (3) oakley.it (¶4(b)(ii)).
The last remaining circumstance is ¶4(b)(iii). The Panel agrees Respondent registered this disputed domain name primarily to disrupt the business of a competitor (the seller of counterfeit goods by necessity competes with the authentic manufacturer).
Finally, this list of circumstances is not exhaustive. This Panel holds registering a domain name and using it to sell counterfeit goods is adequate proof the domain name was registered and is being used in bad faith, even though that is not a specifically enumerated circumstance that demonstrates bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <myfakeoakleysunglasses.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, August 21, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page