Oakley, Inc. v. Domain Whois Protection Service / Whois Agent
Claim Number: FA1209001461599
Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, Inc., California, USA. Respondent is Domain Whois Protection Service / Whois Agent (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oakleyall.com>, registered with Jiangsu Bangning Science & Technology Co. Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2012; the National Arbitration Forum received payment on September 6, 2012. The Complaint was received in Chinese and English.
On September 9, 2012, Jiangsu Bangning Science & Technology Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <oakleyall.com> domain name is registered with Jiangsu Bangning Science & Technology Co. Ltd. and that Respondent is the current registrant of the name. Jiangsu Bangning Science & Technology Co. Ltd. has verified that Respondent is bound by the Jiangsu Bangning Science & Technology Co. Ltd. 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 September 17, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 9, 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@oakleyall.com. Also on September 17, 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 October 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
(a) Respondent has no proprietary rights or interests in the disputed domain name and has not been commonly known by the domain name or Complainant’s mark.
(b) Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s products, which is not 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).
(a) Respondent has registered a confusingly similar domain name to attract Internet users to its website so that Respondent can profit from the sale of counterfeit versions of Complainant’s products. As such, Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b) (iv).
(b) Given the fame of the OAKLEY mark, and the fact that Respondent is selling counterfeit versions of Complainant’s products, it is clear that Respondent had knowledge of Complainant’s rights in the OAKLEY mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that manufactures, distributes, and sells prestigious sports eyewear, apparel, footwear, accessories, and other merchandise under its OAKLEY mark.
2. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its OAKLEY mark (e.g., Reg. No. 1,519,823 registered January 10, 1989).
3. Respondent registered the <oakleyall.com> domain name on November 2, 2011.
4. Respondent uses the disputed domain name to resolve to a website selling counterfeit products that bear Complainant’s OAKLEY mark.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it is an internationally recognized manufacturer, distributor, and retailer of sports eyewear, apparel, footwear, and accessories. Complainant asserts that it owns numerous trademark registrations with the USPTO for its OAKLEY mark (e.g., Reg. No. 1,519,823 registered January 10, 1989). The Panel finds that Complainant’s trademark registrations with the USPTO are sufficient for it to establish rights in the mark under Policy ¶ 4(a) (i), regardless of the location of the parties. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (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).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OAKLEY mark. Complainant argues that Respondent’s <oakleyall.com> domain name is confusingly similar to Complainant’s OAKLEY mark. Complainant asserts that the additions of the generic term “all” and the gTLD “.com” do not sufficiently distinguish the disputed domain name from the mark. The Panel agrees and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a) (i). See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arab. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a) (i) analysis).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s OAKLEY trademark and to use it in its domain name , adding only the word “all”, thus enhancing the confusing similarity between the domain name and the trademark;
(b) (b) Respondent has then used the disputed domain name to resolve to a website selling counterfeit products that bear Complainant’s OAKLEY mark;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also contends that Respondent has no proprietary rights or interests in the disputed domain name and has not been commonly known by the domain name or Complainant’s mark. The Panel notes that the WHOIS information identifies the domain name registrant as “Domain Whois Protection Service / Whois Agent.” The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c) (ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response);
(e) Complainant also asserts that Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s products, which is not 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 Complainant’s Exhibit J. The Panel finds that Respondent’s use of the disputed domain name to sell counterfeit goods is not 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 Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has registered a confusingly similar domain name to attract Internet users to its website so that Respondent can profit from the sale of counterfeit versions of Complainant’s products. As such, Complainant argues that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b) (iv). The Panel agrees with Complainant and finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because it attempted to attract consumers to the resolving website by creating a likelihood of confusion with Complainant for Respondent’s own commercial gain. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Secondly, Complainant argues that given the fame of the OAKLEY mark and the fact that Respondent is selling counterfeit versions of Complainant’s products, it is clear that Respondent had knowledge of Complainant’s rights in the OAKLEY mark when it registered the disputed domain name. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant’s rights in the OAKLEY mark prior to registering the disputed domain name and finds that such knowledge is evidence of bad faith under Policy ¶ 4(a) (iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the OAKLEY mark, adding to it the word “all” and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oakleyall.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 12, 2012
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