national arbitration forum

 

DECISION

 

Oakley, Inc. v. Sun Fashion LLC

Claim Number: FA1309001518885

 

PARTIES

Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, Inc., California, USA. Respondent is Sun Fashion LLC (“Respondent”), represented by Olga Zalomiy of Law Offices of Olga Zalomiy, PC, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <oakley.pro>, registered with Regional Network Information Center JSC d/b/a RU-CENTER.

 

PANEL

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.

 

Antonina Pakharenko-Anderson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2013; the National Arbitration Forum received payment on September 10, 2013.

 

On September 12, 2013, Regional Network Information Center JSC dba RU-CENTER confirmed by e-mail to the National Arbitration Forum that the <oakley.pro> domain name is registered with Regional Network Information Center JSC dba RU-CENTER and that Respondent is the current registrant of the name.  Regional Network Information Center JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center JSC dba RU-CENTER 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 23, 2013, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of October 15, 2013 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.pro.  Also on September 23, 2013, the Russian language 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.

 

A timely English language Response was received and determined to be complete on October 15, 2013.

 

Complainant submitted a timely Additional Submission that was received and found compliant on October 21, 2013.

 

Respondent also submitted a timely Additional Submission that was received and found compliant with Supplemental Rule 7 on October 25, 2013.

On October 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A. Complainant

 

Policy ¶ 4(a)(i)

• Complainant manufactures and sells eyewear, sunglasses, and other merchandise under the OAKLEY mark. The OAKLEY mark has been federally registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,519,823 registered on January 10, 1989).
• Respondent has registered the <oakley.pro> domain name, which only adds the generic top-level domain (“gTLD”) “.pro” to the OAKLEY mark.

Policy ¶ 4(a)(ii)

• Respondent is not known by the <oakley.pro> domain name, or as “Oakley Pro.” The WHOIS information identifies Respondent as “OOO Expoprint.” Complainant has not authorized or licensed Respondent’s use of the OAKLEY mark in domain names.
• Respondent uses the <oakley.pro> domain name to sell counterfeit goods.

Policy ¶ 4(a)(iii)

• Respondent is creating the likelihood that Internet users will purchase the counterfeit goods sold through the <oakley.pro> domain name under the belief that the goods derive from Complainant and the OAKLEY mark.
• Respondent likely knew of Complainant’s rights in OAKLEY when registering the <oakley.pro> domain name. At the least, Respondent is held to constructive knowledge of Complainant’s rights in the OAKLEY mark.

Respondent registered <oakley.pro> on October 14, 2011.

 

B. Respondent

 

Policy ¶ 4(a)(ii)

• Respondent is a distributor affiliated with Luxottica Trading & Finance Ltd. (“Luxottica”), a company that acquired Complainant in 2007. Respondent purchases OAKLEY products from Luxottica and distributes the goods to retailers throughout the Russian Federation. Respondent has expanded its promotional and commercial operations throughout the former satellites of the Soviet Union. Respondent promoted OAKLEY goods at the Russian stage of the Superbike World Championship, which occurred in Moscow in 2012–13. See Response, at Attached Ex. 8. Respondent uses the domain name to promote and sell official OAKLEY merchandise purchased through Luxottica.
• The <oakley.pro> domain names’ website clarifies that Respondent is a retailer of OAKLEY goods and that it is not Complainant.

Policy ¶ 4(a)(iii)

• Respondent registered the domain name in a good faith attempt to promote and sell goods in connection with its agreement with Luxottica. Respondent made significant investments in marketing OAKLEY products at the Superbike World Championships, and such an investment would not have been made if Respondent simply sought to leech off of Complainant.

 

C. Additional Submissions

 

Complainant

• Respondent is not authorized to use the OAKLEY mark in domain names, yet Respondent clearly profits from doing so. It does not matter whether Respondent’s sales may be otherwise legitimate, what matters is that Respondent is registering an infringing domain name and trading under that domain name. Use of a domain name that includes only Complainant’s primary OAKLEY mark is confusing and misleading to consumers who will buy from this website.

 

Respondent

• Complainant failed to prove: (1) Respondent’s lack of legitimate interest in the domain name and (2) Respondent’s bad faith registration and use of the Domain Name.
• Respondent had implicit authorization because it openly used the Disputed Domain Name since October of 2011 to further the sales of Oakley goods. Knowledge of Respondent’s operation of the Disputed Domain Name to further the sale of Oakley goods is imputed to Complainant through the knowledge of the LUXOTTICA Group members.

 

Language of the Proceedings

 

Pursuant to Rule 11(a), the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, taking into account that the Registration Agreement is written in Russian.

 

Since Respondent has submitted an English language response, as well as an English language additional submission, the Panel determines that the remainder of the proceedings may be conducted in English.

 

Identity of Respondent

 

Respondent states that Expoprint identified as Respondent in the proceedings is an affiliate of Sun Fashion LLC, a leading Russian retailer of well-known brand sunglasses in the Russian Federation.

 

The relationship between Expoprint and Sun Fashion is evidenced by the Contract of Commission dated September 1, 2013 provided in Annex 2 to the Response.

 

As follows from Annex 11 to the Response and other evidences submitted by Respondent, Sun Fashion LLC appears to be the sole beneficiary and de facto owner and operator of the website associated with the disputed Domain Name.

 

In view of this, the Panel believes Sun Fashion LLC is the due Respondent in this case, and thus finds it necessary to substitute the Respondent initially identified in the Complaint.

 

FINDINGS

The Panel finds that this dispute is outside the scope of UDRP.

 

DISCUSSION

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.

 

Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP

 

This case falls under the category of domain disputes raising the issue of whether an authorized sales agent of trademarked goods can use the trademark at issue in its domain name.

 

Respondent claims that it has entered into distribution agreements with Complainant’s parent company, Luxottica, and that the agreement between the parties gives Respondent the right to promote and sell OAKLEY products in the Russian Federation and other countries within the Commonwealth of Independent States.

 

The issues between the parties are clearly not limited to the trademark law as they touch on contractual relations between the parties.

 

This case requires further submission of evidences, which, in the opinion of the Panel is object of a business and/or contractual dispute between two companies that falls outside the scope of the UDRP. The provided evidences, particularly, are not sufficient for the Panel to assess what rights are granted to Respondent and what is their scope. There is, respectively, an issue of governing law and proper forum, contractual terms and their interpretation, etc.

 

Therefore, it is important to note that the Policy was designed to prevent cybersquatting in domain names and combat abusive registrations and should not be used for resolving more complex trade mark disputes (See Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005).

 

Moreover, the Policy should not be used “to prevent uses that ICANN deemed to be legitimate, including the use of domain names in connection with the bona fide offering of goods and services” (See Oki Data Amerias, Inc. v. ASD, Inc., Case no. D2001-0903 (WIPO November 6, 2001).

 

According to the Panel in Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), complex cases similar to this one may be better decided by the courts than by a UDRP panel:

 

When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible.  National courts are better equipped to take evidence and to evaluate its credibility.

 

The Panel thus concludes that as the present dispute arose out of business relationships between the parties, and contains a question of contractual interpretation, it falls outside the scope of UDRP which was implemented to address abusive cybersquatting, and not contractual or legitimate business disputes (See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005).

 

Based on this finding, the Panel dismisses the Complaint. See Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty.  It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).

 

DECISION

Having established that this dispute is outside the scope of the UDRP Policy, the Panel dismisses the Complaint

 

 

Antonina Pakharenko-Anderson, Panelist

Dated:  November 13, 2013