Oakley, Inc. v. ABGOS / leo chiang
Claim Number: FA1209001461798
Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, Inc., California, USA. Respondent is ABGOS / leo chiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <replicasoakleyshoppe.com>, registered with Name.com LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2012; the National Arbitration Forum received payment on September 8, 2012.
On September 10, 2012, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <replicasoakleyshoppe.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.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, including 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, administrative, and billing contacts, and to postmaster@replicasoakleyshoppe.com. Also on September 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 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 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
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.
Complainant owns numerous 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).
Respondent’s <replicasoakleyshoppe.com> domain name is confusingly similar to the OAKLEY mark.
Respondent is not commonly known by the disputed domain name and holds no trademark or other rights in the domain name or OAKLEY mark.
Respondent has no rights or legitimate interests in the disputed domain name as it uses the domain name to sell counterfeit goods bearing the OAKLEY mark.
Respondent registered and is using the disputed domain name in bad faith by selling counterfeit versions of Complainant’s products, thereby disrupting Complainant’s business.
Respondent has used Complainant’s mark to attract Internet users to the website for commercial gain by creating confusion in the minds of Internet users as to Complainant’s affiliation with the website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns numerous trademark registrations with the USPTO for its OAKLEY mark.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the OAKLEY mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the at-issue domain name to sell counterfeit goods bearing the OAKLEY mark, as well as other goods.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the OAKLEY mark under Policy ¶ 4(a)(i) through registrations of such mark with the USPTO. It is insignificant that Respondent may be located in China. 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).”); 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 at-issue domain name contains Complainant’s mark entirely, while adding the generic terms “replicas” and “shoppe,” appending the generic top-level domain, “.com.” Respondent’s additions to Complainant’s mark do not distinguish the domain name from the mark for the purposes of the Policy. See Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel concludes that Respondent’s <replicasoakleyshoppe.com> domain name is confusingly similar to Complainant’s OAKLEY mark under Policy ¶ 4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the registrant of the <replicasoakleyshoppe.com> domain name as “ABGOS / leo chiang” and there is no evidence that tends to prove that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <replicasoakleyshoppe.com> domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent’s lack of rights in the domain name is illustrated through Respondent’s use of the disputed domain name to resolve to a website that sells counterfeit products bearing Complainant’s OAKLEY marks. Respondent also appears to be selling products under other brands as well. Using the domain name in the this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the <replicasoakleyshoppe.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 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).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, a Policy ¶4(b) bad faith circumstance is present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent is using the disputed domain name to sell products affixed with Complainant’s OAKLEY mark. As mentioned above, these products are counterfeit versions of Complainant’s products. Respondent is also selling other products which are not related to Complainant. Thereby, Respondent obtains, or intends to obtain, commercial benefit from using the Complainant’s mark. These circumstances demonstrate that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Finally, it is apparent, given the fame of Complainant’s trademark and the manner in which Respondent uses the mark as part of its confusingly similar domain name, that Respondent had actual knowledge of Complainant’s rights in the OAKLEY mark prior to registering <replicasoakleyshoppe.com>. The OAKLEY mark is famous worldwide and Complainant owns several trademark registrations for such mark. Complainant and its trademark are highly visible because of Complainant’s strong online presence and otherwise. Given the forgoing it would have been inconceivable for Respondent to not have known of Complainant and its OAKLEY trademark before registering the at-issue domain name. Moreover, Respondent’s online sale of counterfeit goods bearing the OAKLEY mark and logo likewise indicates that Respondent must have been aware of Complainant and its OAKLEY mark before it registered <replicaoakleyshoppe.com>. Respondent’s desire to trading on OAKLEY and Complainant’s goodwill appears to be why Respondent registered the at-issue domain name and further indicates Respondent knew of Complainant and the OAKLEY mark prior to registration. Importantly, Respondent’s actual knowledge of Complainant trademark is sufficient for a finding of bad faith registration and use 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <replicasoakleyshoppe.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 8, 2012
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