Oakley, Inc., v. dajun li
Claim Number: FA1211001473777
Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, Inc., California, USA. Respondent is dajun li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oakleysfrogskinsstores.com>, registered with GoDaddy.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.
John J. Upchurch 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 December 3, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <oakleysfrogskinsstores.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 December 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@oakleysfrogskinsstores.com. Also on December 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 January 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 makes the following assertions:
1. Complainant, Oakley, Inc., 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. Complainant also owns a number of domain name registrations which wholly incorporate Complainant’s OAKLEY mark, including <oakley.com>, <oakley.co.uk>, and <oakley.it>.
2. Complainant owns and shows evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the OAKLEY mark (e.g., Reg. No. 1,519,823, registered January 10, 1989).
3. Respondent’s <oakleysfrogskinsstores.com> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s OAKLEY mark in its entirety and adds the generic term “stores” and Complainant’s trademark “frogskins.”
4. Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent is using the disputed domain name to sell counterfeit products bearing Complainant’s marks.
5. Respondent has registered and is using the disputed domain name in bad faith.
i. Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website to which Respondent’s domain name resolves, where Respondent presumably obtains commercial benefits through the sale of counterfeit products.
ii. Respondent had knowledge of the OAKLEY mark when it registered the disputed domain name.
6. Respondent registered the <oakleysfrogskinsstores.com> domain name on May 20, 2012.
B. Respondent failed to submit a Response in this proceeding.
1. Respondent’s <oakleysfrogskinsstores.com> domain name is confusingly similar to Complainant’s OAKLEY mark.
2. Respondent does not have any rights or legitimate interests in the <oakleysfrogskinsstores.com> domain name.
3. Respondent registered or used the <oakleysfrogskinsstores.com> 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, Oakley, Inc., asserts that it 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. Complainant asserts that it also owns a number of domain name registrations which wholly incorporate Complainant’s OAKLEY mark, including <oakley.com>, <oakley.co.uk>, and <oakley.it>. Complainant argues and shows that it owns trademark registrations with the USPTO for the OAKLEY mark (e.g., Reg. No. 1,519,823, registered January 10, 1989). See Complainant’s Annex B. The Panel notes that although Respondent appears to reside in China, Policy ¶ 4(a)(i) only requires Complainant establish its rights in the OAKLEY mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant’s registration of the OAKLEY mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <oakleysfrogskinsstores.com> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s OAKLEY mark in its entirety and adds the generic term “stores.” Complainant also argues that the use of Complainant’s trademark “frogskins” does not sufficiently distinguish the domain name from Complainant’s mark. The Panel notes that the term “frogskins” may be considered as descriptive of Complainant’s OAKLEY mark. The Panel finds that the addition of a generic or descriptive term does not adequately differentiate Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also 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 notes that Respondent adds an “s” to Complainant’s OAKLEY mark in the disputed domain name. The Panel determines that the addition of an “s” to the domain name does not eliminate confusing similarity between Respondent’s disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i). See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark). The Panel also notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the end of the disputed domain name. The Panel finds that the addition of a gTLD does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel concludes that Respondent’s <oakleysfrogskinsstores.com> domain name is confusingly similar to Complainant’s 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 argues that Respondent is not commonly known by the disputed domain name. Complainant contends that the WHOIS information identifies “dajun li” as the registrant of the disputed domain name. Complainant asserts that it has not authorized or licensed Respondent to use or register a domain name which incorporates Complainant’s OAKLEY mark. The Panel notes that Respondent has not submitted information showing that it is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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).
Complainant asserts that Respondent is using the disputed domain name to sell counterfeit products bearing Complainant’s marks. Complainant argues that Respondent’s disputed domain name connects to a website which prominently displays the OAKLEY trademark and Icon logo and is selling counterfeit sunglasses bearing the OAKLEY mark and Icon logos. See Complainant’s Annex J. The Panel determines that Respondent’s use of the disputed domain name to sell counterfeit sunglasses is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use 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).
Complainant contends that Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website to which Respondent’s domain name resolves, where Respondent presumably obtains commercial benefits through the sale of counterfeit products. The Panel notes that Respondent’s disputed domain name links to a website selling Complainant’s OAKLEY sunglasses or counterfeit versions of those products. See Complainant’s Annex J. The Panel determines that Respondent’s use of the domain name to sell counterfeit products for its own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Complainant argues that Respondent had knowledge of the OAKLEY mark when it registered the disputed domain name. Complainant contends that Respondent’s actual knowledge of Complainant’s rights in the OAKLEY mark are evidenced by the fame of Complainant’s mark and the fact that Respondent is using the domain name to sell counterfeit versions of Complainant’s products. Accordingly, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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 <oakleysfrogskinsstores.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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