Oakley, Inc. v. dong xue
Claim Number: FA1211001473825
Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, Inc., California, USA. Respondent is dong xue (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oakleycoupon.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), 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 4, 2012, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <oakleycoupon.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@oakleycoupon.com. Also on December 6, 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 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 issues 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.
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.
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 bearing Complainant’s marks.
ii. Respondent had knowledge of Complainant’s OAKLEY mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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., contends 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 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). The Panel notes that although Respondent appears to reside in China, Complainant only needs to establish its rights in the OAKLEY mark in some jurisdiction to satisfy Policy ¶ 4(a)(i). 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). The Panel determines that Complainant’s registration of the OAKLEY mark with the USPTO adequately establishes Complainant’s 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 argues that Respondent’s <oakleycoupon.com> domain name is confusingly similar to Complainant’s OAKLEY mark as it incorporates Complainant’s mark in its entirety and merely adds the generic term “coupon.” The Panel finds that the addition of a generic term does not adequately differentiate Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Complainant further contends that the addition of the gTLD “.com” fails to distinguish the domain from the mark. The Panel determines that the addition of a gTLD to the end of the disputed domain name does not distinguish Respondent’s disputed 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 determines that Respondent’s <oakleycoupon.com> domain name is confusingly similar to Complainant’s OAKLEY mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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. Complainant satisfies its burden, the burden then shifts to Respondent to show that it do have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies “dong xue” as the registrant of the disputed domain name. The Panel also notes that Respondent fails to provide additional evidence showing that it is commonly known by the disputed domain name. Therefore, 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 contends that Respondent is using the disputed domain name to sell counterfeit products bearing Complainant’s marks. Complainant argues that the website located at <oakleycoupon.com> reveals that it prominently displays the OAKLEY trademark and logo and is selling counterfeit sunglasses bearing the OAKLEY mark and logos. The Panel finds that Respondent’s use of the disputed domain name to sell counterfeit products 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 has proven this element.
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 bearing Complainant’s marks. The Panel finds that Respondent’s use of the disputed domain name to sell counterfeit products shows bad faith registration and use of the domain name 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 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 bearing Complainant’s marks. The Panel finds that Respondent’s use of the disputed domain name to sell counterfeit products shows bad faith registration and use of the domain name 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).
Complainant argues that Respondent had knowledge of Complainant’s OAKLEY mark when it registered the disputed domain name. Complainant argues that Respondent’s actual knowledge of Complainant’s rights in the OAKLEY mark is evidenced by the fame of the OAKLEY mark and the fact that Respondent is using the domain name to sell counterfeit versions of Complainant’s products. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) through its actual knolwedge of Complainant’s rights in the OAKLEY mark. 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <oakleycoupon.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 10, 2013
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