Oakley, Inc. v. Holbach Reynalda
Claim Number: FA1209001461600
Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, Inc., California, USA. Respondent is Holbach Reynalda (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hipoakley.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 6, 2012; the National Arbitration Forum received payment on September 7, 2012.
On September 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <hipoakley.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 September 11, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of October 1, 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, adminis-trative, and billing contacts, and to postmaster@hipoakley.com. Also on Septem-ber 11, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Re-spondent 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 8, 2012, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 is a prominent manufacturer, distributor and retailer of sports eye-wear, apparel, footwear and other merchandise.
Complainant holds trademark registrations, on file with the United States Patent and Trademark Office ("USPTO") for the OAKLEY mark (including Reg. No. 1,519,823, registered January 10, 1989).
Complainant operates its business online through a variety of domain names, including <oakley.com>.
Respondent registered the <hipoakley.com> domain name on January 4, 2012.
Respondent’s domain name is confusingly similar to the OAKLEY mark.
Respondent has no proprietary interest in the disputed domain name and has not been commonly known by the disputed domain name.
Respondent has not been licensed or otherwise authorized by Complainant to use the OAKLEY mark.
Respondent is using the disputed domain name to resolve to a website that sells counterfeit products bearing Complainant’s OAKLEY mark.
Respondent gains commercially from such sales by creating confusion as to the possibility of Complainant’s affiliation with the resolving website.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Respondent knew of Complainant’s rights in the OAKLEY mark when it regis-tered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 rights in the OAKLEY mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, 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).
Turning then to the central question arising under Policy ¶ 4(a)(i), we conclude from our review of the record that Respondent’s <hipoakley.com> domain name is confusingly similar to the OAKLEY mark. The domain name includes the entire mark, merely adding the generic term “hip” and the gTLD “.com.” These differences are inadequate to distinguish the domain name from the mark under the standards of the Policy. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name there in dispute contained the mark of a complainant combined with a generic word or term); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name, such as “.net” or “.com,” does not affect a determination as to whether it is ident-ical or confusingly similar to the mark of a UDRP complainant under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a UDRP complainant must first make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that Respondent has no proprietary interest in the disputed domain name, and that Respondent has not been licensed or otherwise authorized to use the OAKLEY mark. Moreover, the pertinent WHOIS information identifies the registrant of the <hipoakley.com> domain name only as “Holbach Reynalda,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where that re-spondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence showing that it was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain name to resolve to a website that sells counterfeit products bearing Complainant’s OAKLEY mark. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <hipoakley.com> domain name under Policy ¶ 4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent registered and is using the <hipoakley.com> domain name to create confusion in the minds of Internet consumers as to the possibility of Complainant’s affiliation with or sponsorship of the disputed domain name, including by selling counterfeit goods labeled with the OAKLEY mark, thereby profiting commercially from the traffic at the website resolving from its domain name. This is evidence that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that a respondent attempted to gain commercially by creating confusion among Internet users as to the possibility of a UDRP complainant’s connection with the website resolving from a contested domain name by selling counterfeit products of that complainant).
We are also convinced from the evidence that Respondent knew of Complain-ant’s rights in the OAKLEY mark when it registered the disputed domain name. This stands as independent evidence of bad faith registration of the domain name under Policy ¶ 4(a)(iii). See, for example, Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was “well-aware” of a UDRP complainant’s YAHOO! mark at the time of its domain name registration).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <hipoakley.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 22, 2012
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