Oakley, Inc. v. salisbury / andrew roper
Claim Number: FA1211001473754
Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, Inc., California, USA. Respondent is salisbury / andrew roper (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapsunglassesoakley.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 November 30, 2012; the National Arbitration Forum received payment on November 30, 2012.
On November 30, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <cheapsunglassesoakley.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. 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 December 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@cheapsunglassesoakley.com. Also on December 3, 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 January 2, 2013, 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 name be transferred from Respondent to Complainant.
1. Complainant is an internationally-recognized manufacturer, distributor and retailer of sports eyewear, apparel, footwear, accessories and other merchandise, all of which prominently displays its famous and internationally recognized and federally registered trademark.
2. Complainant owns numerous United States Patent and Trademark Office (“USPTO”) trademark registrations for its OAKLEY mark in connection with eyewear, apparel, footwear, headwear, accessories and other merchandise, including the following:
Reg. No. 1,519,823 registered January 10, 1989;
Reg. No. 1,521,599 registered January 24, 1989;
Reg. No. 1,522,692 registered January 31, 1989;
Reg. No. 1,552,583 registered August 22, 1989;
Reg. No. 2,293,046 registered November 16, 1999;
Reg. No. 2,409,789 registered December 5, 2000; &
Reg. No. 3,153,943 registered October 10, 2006.
3. Respondent’s <cheapsunglassesoakley.com> incorporates Complainant’s OAKLEY mark in its entirety and the addition of the generic terms “cheap” and “sunglasses” and the generic top-level domain does not sufficiently distinguish the disputed domain name from the mark.
4. Respondent’s domain name was registered on May 30, 2011, more than thirty-three years after Complainant first used its OAKLEY mark.
5. Respondent was likely aware of Complainant’s domain names and websites before Respondent registered the disputed domain name because Complainant’s sites were operational and thus easily accessible to Respondent at the time Respondent registered the disputed domain name.
6. Because Complainant’s federal registrations and common law use predate Respondent’s domain name registration and because Respondent is charged with constructive knowledge of Complainant’s OAKLEY mark, Respondent has no proprietary rights or legitimate interests in the disputed domain name.
7. The website resolving from Respondent’s disputed domain name prominently displays the OAKLEY trademark and Icon logo and offers counterfeit sunglasses bearing the OAKLEY mark for sale, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
8. Complainant has not authorized or licensed Respondent to manufacture or sell sunglasses.
9. Respondent is not commonly known by the disputed domain name as the WHOIS information identifies Respondent as “Salisbury/Andrew Roper.”
10. Complainant has not authorized or licensed Respondent to register a domain name incorporating Complainant’s OAKLEY mark.
11. Respondent registered and is using the disputed domain name in bad faith because it is diverting Complainant’s customers or potential customers seeking information about Complainant to the Respondent’s resolving website where Respondent presumably obtains commercial benefit through the sale of counterfeit products bearing Complainant’s mark.
12. Given the fame of Complainant’s mark and the fact that Respondent is using the domain name to sell counterfeit versions of Complainant’s products, it is clear that Respondent had knowledge of the OAKLEY mark when it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its OAKLEY mark.
2. Respondent’s <cheapsunglassesoakley.com>domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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 argues that it owns numerous USPTO trademark registrations for its OAKLEY mark in connection with eyewear, apparel, footwear, headwear, accessories and other merchandise, including the following:
Reg. No. 1,519,823 registered January 10, 1989;
Reg. No. 1,521,599 registered January 24, 1989;
Reg. No. 1,522,692 registered January 31, 1989;
Reg. No. 1,552,583 registered August 22, 1989;
Reg. No. 2,293,046 registered November 16, 1999;
Reg. No. 2,409,789 registered December 5, 2000; &
Reg. No. 3,153,943 registered October 10, 2006.
The Panel concludes that these USPTO trademark registrations are sufficient to establish Complainant’s rights in the OAKLEY mark for the purposes of Policy ¶ 4(a)(i), even though Respondent is not located in the U.S. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant asserts that Respondent’s <cheapsunglassesoakley.com> domain name is confusingly similar to Complainant’s OAKLEY mark because the disputed domain name incorporates Complainant’s OAKLEY mark in its entirety and the addition of the generic terms “cheap” and “sunglasses” and the generic top-level domain (“gTLD”) does not sufficiently distinguish the disputed domain name from the mark. Previous panels have held that neither the addition of generic or descriptive terms nor the attachment of a gTLD prevents a finding of confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel therefore determines that Respondent’s <cheapsunglassesoakley.com> domain name is 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 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.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name as the WHOIS information identifies Respondent as “Salisbury/Andrew Roper” as the registrant. Complainant asserts that it has not licensed or authorized Respondent to use or register a domain name which incorporates Complainant’s OAKLEY mark. The Panel concludes that, based on Complainant’s arguments and the available evidence, Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant contends that the website resolving from Respondent’s disputed domain name prominently displays the OAKLEY trademark and Icon logo and offers counterfeit sunglasses bearing the OAKLEY mark for sale. Complainant argues that this function does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Previous panels have held that commercial use of a disputed domain name to sell counterfeit goods is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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). The Panel accordingly finds that Respondent has not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant asserts that Respondent registered and is using the disputed domain name in bad faith because Respondent is diverting Complainant’s customers seeking information about Complainant to Respondent’s resolving website where Respondent presumably obtains commercial benefits through the sale of counterfeit goods. The Panel may find that Respondent’s activities at the disputed domain name constitute competition with Complainant and disrupt Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). 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).
Complainant contends that Respondent presumably benefits from the sale of counterfeit goods at the resolving website and uses the confusingly similar disputed domain name to attract consumers seeking Complainant. The Panel holds that Respondent is therefore using the disputed domain name to attract consumers and create confusion regarding the affiliation or sponsorship of the disputed domain name for Respondent’s own financial gain, which is evidence of bad faith registration and use pursuant to 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).
Complainant alleges that Respondent is charged with constructive knowledge of Complainant’s rights in the OAKLEY mark as Complainant’s federal registrations and common law use predate Respondent’s domain name registration. Complainant also contends that it is clear that Respondent had knowledge of the mark given the fame of Complainant’s mark and the fact that Respondent is using the domain name to sell counterfeit versions of Complainant’s products. Previous panels have determined that a finding of bad faith registration cannot be based on constructive knowledge alone. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). If the Panel finds that Respondent had actual notice of Complainant’s mark, however, the Panel concludes that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject 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 <cheapsunglassesoakley.com> domain name be TRANSFERRED from Respondent to Complainant .
Tyrus R. Atkinson, Jr., Panelist
Dated: January 16, 2013
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