Oakley, Inc. v. Above.com Domain Privacy
Claim Number: FA1209001462074
Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oakleysi.com>, registered with Above.com Pty. Ltd.
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 10, 2012; the National Arbitration Forum received payment on September 10, 2012.
On September 23, 2012, Above.com Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <oakleysi.com> domain name is registered with Above.com Pty. Ltd. and that Respondent is the current registrant of the name. Above.com Pty. Ltd. has verified that Respondent is bound by the Above.com Pty. 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 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@oakleysi.com. Also on September 24, 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 19, 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:
Policy ¶ 4(a)(i): Complainant’s rights and confusing similarity of the <oakleysi.com> domain name.
Complainant has rights in the OAKLEY mark, used in connection with sports eyewear, apparel, footwear, accessories, and other merchandise. Complainant is the owner of the trademark registrations for the OAKLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,519,823 registered January 10, 1989).
The <oakleysi.com> domain name is confusingly similar to the OAKLEY mark. The addition of the letters “si” and the generic top-level domain (“gTLD”) “.com” do not remove the disputed domain name from the realm of confusing similarity.
Respondent lacks of rights and legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information for the <oakleysi.com> domain name lists “Above.com Domain Privacy” as the domain name registrant, not a variation of “Oakley SI,” and Respondent has not been authorized or licensed to register a domain name incorporating the OAKLEY mark.
The <oakleysi.com> domain name’s resolving website is not used for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The <oakleysi.com> domain name is used by Respondent to advertise links to Complainant’s products.
Policy ¶ 4(a)(iii): Respondent’s registration and use of the <oakleysi.com> domain name is in bad faith. The <oakleysi.com> domain name diverts Complainant’s customers away from Complainant and to Respondent’s website where Respondent obtains commercial benefits through the marketing of Complainant’s products via a directory of links.
Respondent had knowledge of the OAKLEY mark when it registered the <oakleysi.com> domain name. The OAKLEY mark is famous, and Respondent is using the mark in order to advertise Complainant’s products.
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.
The website addressed by the at-issue domain name displays pay-per-click links to Competitor’s products as well as to competitors of Complainant.
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) by showing it registered such mark with the USPTO. It is insignificant that Respondent may be located outside of the USPTO’s jurisdiction. 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 <oakleysi.com> domain name is confusingly similar to the OAKLEY mark under Policy ¶ 4(a)(i). The addition of the letters “si” and the gTLD “.com” do not remove the disputed domain name from the realm of confusing similarity. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (finding the addition of letters to a mark in a domain name does not differentiate the domain name from the mark); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), (holding that the addition of a gTLD to a mark is a necessary component of a domain name and thus makes no difference to a determination of confusing similarity).
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 <oakleysi.com> domain name as “Above.com Domain Privacy.” Additionally, there is no evidence that tends to prove that notwithstanding the aforementioned WHOIS record that Respondent is otherwise commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <oakleysi.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).
The <oakleysi.com> domain name is used by Respondent to advertise links to Complainant’s products. Such links also advertise Complainant’s competitors. The links are listed under headings such as “Oakley Sunglasses” and “Rayban Sunglasses.” An examination of some of the underlying HTML associated with these hyperlinks reveals that clicks thereon are accounted for by Google sponsored advertising servers. Respondent’s use of the <oakleysi.com> domain name in this manner does not provide Respondent with rights or legitimate interests as the domain name is used for neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
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 conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
The confusingly similar <oakleysi.com> domain name diverts Complainant’s customers away from Complainant and to Respondent’s website. Respondent’s website provides Respondent with an opportunity to commercial benefit by marketing Complainant‘s products, as well as Complainant’s competitors’ products, via a directory of hyperlinks. The links display such things as “Designer Sunglasses” and “Oakley Sunglasses” and as mentioned above, the HTML code underlying these links shows that click-through traffic appears to be accounted for by Google advertising servers. These circumstances demonstrate, pursuant to Policy ¶4(b)(iv), that Respondent registered and is using the <oakleysi.com> domain name in bad faith as a means to take commercial advantage of Internet users’ mistakes and confusion about any affiliation between Complainant and Respondent. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Finally, Respondent had knowledge of the OAKLEY mark when it registered the <oakleysi.com> domain name. The OAKLEY mark is well-known and Respondent is using the mark in order to intentionally advertise and tradeoff Complainant’s products. Given the foregoing, there can be little doubt that Respondent had actual knowledge of Complainant's mark and its rights therein prior to registering that at-issue domain name. Registering another’s trademark as a domain name with prior knowledge thereof indicates bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oakleysi.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 21, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page