Oakley, Inc. v. Lin Peng
Claim Number: FA1211001469605
Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, Inc., California, USA. Respondent is lin peng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lovecheapoakleys.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2012; the National Arbitration Forum received payment on November 2, 2012.
On November 9, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <lovecheapoakleys.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 November 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@lovecheapoakleys.com. Also on November 13, 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 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follow:
Complainant was formed in 1975 and has used the OAKLEY mark since that time with regard to its sports eyewear, apparel, footwear, accessories, and other merchandise.
Complainant has registered the OAKLEY mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,519,823 registered Jan. 10, 1989).
Respondent’s <lovecheapoakleys.com> domain name is confusingly similar to Complainant’s OAKLEY mark, as the addition of the generic terms “love” and “cheap” do not sufficiently distinguish the domain name from Complainant’s mark. The addition of the generic top-level domain “.com” also fails to distinguish the domain name from the mark under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the <lovecheapoakleys.com> domain name.
Respondent registered the disputed domain name on September 19, 2012 and has not been authorized or licensed to use the OAKLEY mark or sell Complainant’s products. Respondent has no proprietary rights in the domain name and is not commonly known by the disputed domain name.
Respondent is not making a bona fide offering of goods or services with the disputed domain name because Respondent is selling counterfeit products bearing the OAKLEY mark.
Respondent registered and is using the <lovecheapoakleys.com> domain name in bad faith.
Respondent is diverting Complainant’s customers or potential customers to Respondent’s website that sells counterfeit goods bearing the OAKLEY mark. This type of behavior is evidence of bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Given the fame of Complainant’s OAKLEY mark and the fact that Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s products, it is clear that Respondent had knowledge of the OAKLEY mark when its registered the <lovecheapoakleys.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations for its OAKLEY mark with the USPTO.
Respondent registered the at-issue domain name after Complainant acquired rights in the OAKLEY mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s <lovecheapoakleys.com> website offers counterfeit goods for sale bearing the OAKLEY mark.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the OAKLEY mark under Policy ¶ 4(a)(i) by showing it registered such mark with the USPTO. It is insignificant that Respondent may be located outside of the jurisdiction of the registrar. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <lovecheapoakleys.com> domain name is confusingly similar to Complainant’s OAKLEY mark since the prefixing of the generic terms, “love” and “cheap,” before Complainant’s OAKLEY mark, the suffixing of a possessive “s” after the mark, and appending of the top level domain name, here “.com,” to the resulting string, do nothing to distinguish the at-issue domain name from Complainant’s OAKLEY trademark for the purposes of Policy ¶4(a)(i). See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also, Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the registrant of the <lovecheapoakleys.com> domain name as “lin peng.” Additionally, there is no evidence that tends to prove that notwithstanding the aforementioned WHOIS information that Respondent is nevertheless commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <lovecheapoakleys.com> domain name for the purposes of Policy ¶ 4(c)(ii). 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); see also 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).
Furthermore, Respondent use of the at-issue domain name is neither a bona fide offering of goods or services under Policy 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because, as mentioned throughout herein, Respondent is offering counterfeit OAKLEY products bearing Complainant’s trademark via the <lovecheapoakleys.com> website. See Juicy Couture, Inc. v. Wang Kunkun et al., FA1005001323092 (Nat. Arb. Forum, June 18, 2010) (finding “Respondent’s use of the <myjuicycouture.com> and <juiceycouturebuy.com> domain names to offer counterfeit versions of Complainant’s products does not constitute 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 also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present and there is also non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent’s use of the at-issue domain name diverts, or intents to divert, Complainant’s customers, or potential customers, to Respondent’s <lovecheapoakleys.com> website where Respondent offers counterfeit goods bearing the OAKLEY mark for sale. These circumstances demonstrate bad faith registration and use of the at-issue 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). Correspondingly, using the at-issue confusingly similar domain name to offer and sell counterfeit versions of Complainant’s products also evidences bad faith 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).
Finally, Respondent had knowledge of Complainant’s OAKLEY mark when it registered the <lovecheapoakleys.com> domain name. The OAKLEY mark is well-known throughout the world and Respondent is using the mark in order to intentionally trade off of Complainant’s trademark by offering counterfeit OAKLEY products for sale at the <lovecheapoakleys.com> website. Given the foregoing, there can be no doubt that Respondent had actual knowledge of Complainant's mark and its rights therein prior to registering that at-issue domain name. Registering another’s trademark as a domain name with prior knowledge thereof indicates bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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 <lovecheapoakleys.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 17, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page