Oakley, Inc. v. da zheng / zheng da
Claim Number: FA1208001456173
Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, Inc., California, USA. Respondent is da zheng / zheng da (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oakleyfrogskinswholesale.com>, registered with Bizcn.com, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2012; the National Arbitration Forum received payment on August 1, 2012. The Complaint was submitted in both English and Chinese.
On August 2, 2012, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <oakleyfrogskinswholesale.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. 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 August 10, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 30, 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@oakleyfrogskinswholesale.com. Also on August 10, 2012, the Chinese language 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 September 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
a. Complainant manufactures, distributes, and sells sports eyewear, apparel, footwear, accessories, and other merchandise under the OAKLEY mark.
b. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the OAKLEY mark (e.g., Reg. No. 1,519,823 registered January 10, 1989).
c. Respondent registered the <oakleyfrogskinswholesale.com> domain name on June 27, 2012.
d. The <oakleyfrogskinswholesale.com> domain name is confusingly similar to Complainant’s OAKLEY mark.
e. Respondent is not commonly known by the <oakleyfrogskinswholesale.com> domain name.
f. Respondent uses the <oakleyfrogskinswholesale.com> domain name to sell counterfeit versions of Complainant’s sunglasses, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
g. Respondent registered and uses the <oakleyfrogskinswholesale.com> domain name in bad faith under Policy ¶ 4(b)(iv).
h. Respondent had actual knowledge of Complainant’s rights in the OAKLEY mark when Respondent registered the <oakleyfrogskinswholesale.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the OAKLEY mark. Respondent’s domain name is confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <oakleyfrogskinswholesale.com> domain name, and that Respondent registered and uses the domain name 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 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.
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.”).
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant contends that Complainant manufactures, distributes, and sells sports eyewear, apparel, footwear, accessories, and other merchandise under the OAKLEY mark. Complainant argues that it owns multiple trademark registrations with the USPTO for the OAKLEY mark (e.g., Reg. No. 1,519,823 registered January 10, 1989). The Panel note thats Respondent resides or operates in China. However, in Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), the panel found that it did not matter whether or not the complainant registered its trademark in the country in which the respondent resided or operated, only that the complainant can establish rights in some jurisdiction. Because the Panel determines that Complainant is the owner of the USPTO trademark registrations, the Panel concludes that Complainant’s sufficiently demonstrated its rights in the OAKLEY mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (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).”).
Complainant claims that the <oakleyfrogskinswholesale.com> domain name is confusingly similar to Complainant’s OAKLEY mark. The disputed domain name contains Complainant’s OAKLEY mark, the generic term “wholesale,” the generic top-level domain (“gTLD”) “.com,” and Complainant’s FROGSKINS mark. The Panel determines that the additions of a generic term, a descriptive term, and a gTLD all fail to adequately distinguish the disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel holds that Respondent’s <oakleyfrogskinswholesale.com> domain name is confusingly similar to Complainant’s OAKLEY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
According to Complainant, Respondent is not commonly known by the <oakleyfrogskinswholesale.com> domain name. Complainant claims that the WHOIS information lists Respondent as “da zheng / zheng da” and that the WHOIS information is proof that Respondent is not commonly known by the disputed domain name. Complainant further argues that Respondent is not authorized or licensed to use the OAKLEY mark in a domain name. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel concluded that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information and the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name. Because the Respondent did not contradict any of Complainant’s claims and did not present any affirmative evidence, the Panel finds that Respondent is not commonly known by the <oakleyfrogskinswholesale.com> domain name for the purpose of Policy ¶ 4(c)(ii).
Complainant asserts that Respondent uses the <oakleyfrogskinswholesale.com> domain name to sell counterfeit versions of Complainant’s sunglasses. Complainant contends that Respondent’s use of the <oakleyfrogskinswholesale.com> domain name for this purpose is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. In Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002), the panel stated that the “[r]espondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of [the complainant’s] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).” The Panel agrees with Complainant and concludes that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <oakleyfrogskinswholesale.com> domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and uses the <oakleyfrogskinswholesale.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant claims that Respondent is diverting Complainant’s customers to Respondent’s resolving website in order to commercially benefit from the sale of counterfeit versions of Complainant’s sunglasses. The Panel infers that Respondent’s selling of counterfeit sunglasses likely creates confusion as to Complainant’s affiliation with the disputed domain name, especially if the sunglasses feature Complainant’s OAKLEY mark, which they do according to Complainant. Therefore, the Panel concludes that Respondent is attempting to commercially benefit from Internet user confusion, which the Panel determines constitutes bad faith registration and use according to Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the OAKLEY mark when Respondent registered the <oakleyfrogskinswholesale.com> domain name. Complainant claims that Respondent’s actual knowledge of Complainant’s mark is evidenced by Respondent’s selling of counterfeit versions of Complainant’s sunglasses bearing Complainant’s OAKLEY mark. Because the Panel agrees with Complainant, the Panel finds that Respondent registered the <oakleyfrogskinswholesale.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oakleyfrogskinswholesale.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 17, 2012
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