Oakley, Inc. v. Seller / Cassandra Egalite
Claim Number: FA1210001469434
Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, Inc., California, USA. Respondent is Seller / Cassandra Egalite (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com>, registered with Enom, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2012; the National Arbitration Forum received payment on October 29, 2012.
On October 30, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@oakley-vault.net, postmaster@canadaoakleysunglasses.net, and postmaster@oakleysvault.com. Also on November 2, 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 December 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is internationally recognized as a manufacturer, distributor and retailer of sports eyewear, apparel, footwear, accessories and other merchandise all featuring Complainant’s OAKLEY mark.
2. Complainant has used its mark in commerce since its formation in 1975.
3. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its OAKLEY mark. (Reg. No. 1,519,823 registered June 10, 1989).
4. Respondent’s <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names are confusingly similar to Complainant’s OAKLEY mark because neither the addition of generic terms nor a generic top-level domain (“gTLD”) distinguishes the domain names.
5. Respondent has no rights or legitimate interests in the <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names.
6. Complainant’s OAKLEY mark is famous.
7. Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
8. Respondent’s disputed domain name is selling counterfeit sunglasses featuring Complainant’s OAKLEY mark.
9. Respondent’s <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names resolve to sites clearly featuring Complainant’s OAKLEY mark and also selling counterfeit sunglasses with the OAKLEY mark.
10. Complainant has not authorized or licensed Respondent to manufacture or sell sunglasses through the disputed domains.
11. The WHOIS information identifies Respondent as “Seller, Cassandra Egalite,” demonstrating that Respondent is not commonly known by the <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names.
12. Complainant has not authorized or licensed Respondent to use or register a domain name which incorporates Complainant’s OAKLEY mark.
13. Respondent has registered and is using the disputed domain names in bad faith.
14. Respondent is diverting Complainant’s customers seeking information about Complainant to Respondent’s websites.
15. Respondent presumably obtains commercial benefits through the sale of counterfeit products bearing Complainant’s mark.
16. Respondent had knowledge of Complainant’s OAKLEY mark when it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its OAKLEY mark.
2. Respondent’s <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names are confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain names.
4. Respondent registered and used the domain names 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.”).
Complainant claims it has rights to the OAKLEY mark pursuant to Policy ¶ 4(a)(i). Complainant states that it has been recognized as a manufacturer and retailer of sports eyewear and other sporting outerwear and accessories since its formation in 1975. Complainant provides evidence of its registrations with the USPTO for its OAKLEY mark:
Reg. No. 1,519,823 registered June 10, 1989;
Reg. No. 1,521,599 registered Jan. 24, 1989;
Reg. No. 1,522,692 registered Jan 31, 1989;
Reg. No. 1,552,583 registered Aug. 22, 1989;
Reg. No. 2,293,046 registered Nov. 16, 1999;
Reg. No. 2,409,789 registered Dec. 5. 2000;
Reg. No. 3,153,943 registered Oct. 10, 2006; &
Reg. No. 3,771,517 registered April 6, 2010.
Previous panels have typically found that evidence of a trademark registration with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). Based on Complainant’s submissions and these USPTO trademark registrations, the Panel finds that Complainant has rights in the OAKLEY mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names are confusingly similar to Complainant’s OAKLEY mark. Complainant states that Respondent incorporates the entire OAKLEY mark in each of the disputed domain names. Complainant argues that the addition of the terms “vault” and/or “sunglasses” in the disputed domain names is insufficient to distinguish the domain name from the OAKLEY mark. Complainant further argues that the addition of the generic top-level domain (“gTLD”) “.net” or “.com” does not sufficiently differentiate the disputed domain names from Complainant’s OAKLEY mark. The Panel notes that Respondent also adds a hyphen between Complainant’s OAKLEY mark and the generic term “vault” in the <oakley-vault.net> domain name, as well as the geographic term “canada” in the <canadaoakleysunglasses.net> domain name. Previous panels have found that variations like these are not sufficient to distinguish a disputed domain name from a registered mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also 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 Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). The Panel agrees with Complainant’s assertions, and finds that Respondent’s <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names are confusingly similar to Complainant’s OAKLEY mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
Complainant argues that Respondent has no rights or legitimate interest in the <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names and is therefore not commonly known by them. Complainant states that the WHOIS information for Respondent lists “Seller Cassandra Egalite” as registrant for the disputed domain names. Complainant also argues that it has not authorized or licensed Respondent to use its OAKLEY mark in any way. Previous panels have found that when a WHOIS information lists a registrant that has no apparent connection to a respondent or the disputed domain name and the complainant has not authorized the respondent to use the disputed domain name, the respondent is not commonly known by the disputed domain name. 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). Therefore, the Panel finds that the Respondent is not commonly known by the <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names.
Complainant alleges that Respondent has no rights or legitimate interests in the <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names as it does not use the disputed domain names in connection with a bona fide offering of goods or services. Complainant states that the <oakley-vault.net> domain name resolves to a website that prominently displays the OAKLEY mark, as well as sells counterfeit sunglasses with the OAKLEY mark on them. The Panel notes that the resolving website features links such as, “LIMITED EDITION FOR UP TO 60% OFF,” “Oakley Sunglasses On Sale,” “Oakley Sunglasses are Designed to Meet your Demand for Chic Looks,” and “Free Shipping For Order Over 99USD.” See Exhibit J. Complainant argues that the <canadaoakleysunglasses.net> and <oakleysvault.com> websites display Complainant’s OAKLEY mark and also sell counterfeit sunglasses featuring the OAKLEY mark. The Panel notes that this resolving page features links such as “OAKLEY,” “Discount Oakley Sunglasses,” “Others Oakley Sunglasses,” “Oakley Active Sunglasses,” “Oakley Holdbrook Sunglasses,” and “Oakley Polarized Sunglasses.” See Exhibit J. Complainant states that it has not authorized Respondent to manufacture, sell or offer to sell these products through the use of the websites resolving from the <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names. The Panel presumes that Respondent is profiting from the sales and use of Complainant’s OAKLEY mark and counterfeit products. Previous panel have found that diverting Internet users to a website offering competing services or products, especially counterfeit products, is not a legitimate noncommercial fair use or a bona fide offering of goods or services. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). The Panel therefore finds that Respondent’s selling of counterfeit products through the use of the confusingly similar domain names does not constitute rights or a legitimate interest in the disputed domain names because it is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and ¶ 4(c)(iii).
Complainant claims that Respondent has registered and is using the <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names to sell counterfeit versions of Complainant’s products. Complainant argues that Respondent’s production and advertisement of products held out to be those of Complainant’s despite being counterfeit versions of Complainant’s products disrupts Complainant’s business and constitutes registration and use in bad faith pursuant to ¶ 4(b)(iii). Previous panels have found that a complainant’s business will be disrupted by a respondent registering and using a disputed domain name to sell counterfeit products. See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use). The Panel therefore finds that Respondent’s registration and use of the <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names to sell counterfeit products is evidence of bad faith registration and use and violates Policy ¶ 4(b)(iii).
Complainant further argues that Respondent has registered the disputed domain names in order to create a likelihood of confusion as to the source, sponsorship, and affiliation of the <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names and the counterfeit products featured on the resolving websites, in violation of Policy ¶ 4(b)(iv). Previous panels have found that when a respondent attempts to commercially gain by registering a confusingly similar domain name used to sell counterfeit products, it is bad faith registration and use 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). The Panel agrees, and finds that Respondent’s registration and use of the <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names indicates bad faith pursuant to Policy ¶ 4(b)(iv) as Respondent presumably profits from the sale of counterfeit products.
Complainant states that due to the fame of its OAKLEY mark and the fact that Respondent uses the <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names to sell counterfeit versions of Complainant’s products, it is clear that Respondent had knowledge of the OAKLEY mark at the time it registered the disputed domain names. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION 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 <oakley-vault.net>, <canadaoakleysunglasses.net>, and <oakleysvault.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 24, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page