Oakley, Inc. v. Zhang San
Claim Number: FA1205001444137
Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, California, USA. Respondent is Zhang San (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oakleyonlinesales.com>, registered with Hichina Zhicheng Technology Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2012; the National Arbitration Forum received payment on May 15, 2012. The Complaint was submitted in both Chinese and English.
On May 15, 2012, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <oakleyonlinesales.com> domain name is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology Ltd. 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 May 18, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 7, 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@oakleyonlinesales.com. Also on May 18, 2012, the Chinese 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
The Honourable Neil Anthony Brown QC 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 made the following contentions:
1. Complainant manufactures, distributes, and sells sports eyewear, apparel, footwear, accessories, and other merchandise under its OAKLEY mark.
2. Complainant began using its OAKLEY mark in 1975.
3. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its OAKLEY mark (e.g., Reg. No. 1,519,823 registered January 10, 1989).
4. Respondent registered the <oakleyonlinesales.com> domain name on February 8, 2012.
5. Respondent’s <oakleyonlinesales.com> domain name is confusingly similar to Complainant’s OAKLEY mark.
6. Respondent uses the disputed domain name to resolve to a website selling counterfeit sunglasses that bear Complainant’s OAKLEY mark.
7. Respondent is not commonly known by the <oakleyonlinesales.com> domain name.
8. Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b) (iii) and (iv).
9. Respondent had constructive and actual knowledge of Complainant’s rights in the OAKLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that manufactures, distributes, and sells prestigious sports eyewear, apparel, footwear, accessories, and other merchandise under its OAKLEY mark.
2. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its OAKLEY mark (e.g., Reg. No. 1,519,823 registered January 10, 1989).
3. Respondent registered the <oakleyonlinesales.com> domain name on February 8, 2012.
4. Respondent uses the disputed domain name to resolve to a website selling counterfeit sunglasses that bear Complainant’s OAKLEY mark.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 first question that arises is whether Complainant has rights in a trademark or service mark. In that regard, Complainant alleges that it uses the OAKLEY mark in connection with the manufacture, distribution, and sale of sportswear, apparel, footwear, accessories, and other merchandise. Complainant claims that it has used the OAKLEY mark for this purpose since 1975. According to Complainant, Complainant owns multiple trademark registrations with the USPTO for its OAKLEY mark (e.g., Reg. No. 1,519,823 registered January 10, 1989). While the Panel notes that Respondent resides or operates in China and not the United States, the Panel determines that Complainant’s USPTO trademark registrations sufficiently establish Complainant’s rights in the OAKLEY mark pursuant to Policy ¶ 4(a) (i). 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 Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OAKLEY mark. Complainant asserts that Respondent’s <oakleyonlinesales.com> domain name is confusingly similar to Complainant’s OAKLEY mark. Complainant argues that the disputed domain name contains Complainant’s mark combined with the generic terms “online” and “sales.” Complainant also notes that the disputed domain name also contains the generic top-level domain (“gTLD”) “.com.” The Panel finds that these additions fail to distinguish adequately the disputed domain name from Complainant’s mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). As the Panel makes this finding, the Panel concludes that Respondent’s <oakleyonlinesales.com> domain name is confusingly similar to Complainant’s OAKLEY mark under Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well-established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s OAKLEY trademark and to use it in its domain name , adding only the words “online” and “sales”, thus enhancing the confusing similarity between the domain name and the trademark;
(b) (b) Respondent has then used the disputed domain name to resolve to a website selling counterfeit sunglasses that bear Complainant’s OAKLEY mark;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also submits that Respondent is not commonly known by the <oakleyonlinesales.com> domain name. Complainant argues that the WHOIS information, which identifies the registrant of the disputed domain name as “Zhang San,” indicates that Respondent is not commonly known by the domain name. Furthermore, Complainant claims that it did not authorize or license Respondent to use Complainant’s OAKLEY mark in a domain name. Based on this evidence, the Panel holds that Respondent is not commonly known by the <oakleyonlinesales.com> domain name for the purposes of Policy ¶ 4(c) (ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
(e) Complainant also contends that Respondent uses the <oakleyonlinesales.com> domain name to resolve to a website selling counterfeit sunglasses that bear Complainant’s OAKLEY mark. Complainant argues that Respondent prominently displays the OAKLEY mark and logo on the resolving website. The Panel determines that Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <oakleyonlinesales.com> domain name under Policy ¶ 4(c)(iii). See 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent registered and uses the <oakleyonlinesales.com> domain name for the purpose of diverting Complainant’s customers and potential customers to the resolving website that sells counterfeit versions of Complainant’s products. Specifically, Complainant claims that Respondent sells counterfeit sunglasses that bear the OAKLEY mark. The Panel determines that Respondent’s sale of counterfeit products disrupts Complainant’s business and accordingly, the Panel agrees with Complainant that Respondent registered and uses the <oakleyonlinesales.com> domain name in bad faith pursuant to 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).
Secondly, Complainant claims that Respondent registered and uses the <oakleyonlinesales.com> domain name in bad faith under Policy ¶ 4(b) (iv) because Respondent commercially benefits from the sale of counterfeit versions of Complainant’s sunglasses. Complainant claims that the counterfeit sunglasses bear Complainant’s OAKLEY mark. The Panel finds that Respondent’s selling of counterfeit products under the OAKLEY mark creates Internet user confusion as to Complainant’s affiliation with, endorsement of, or connection to the <oakleyonlinesales.com> domain name and that Respondent attempts to benefit commercially from the confusion. The Panel therefore concludes that Respondent registered and uses the <oakleyonlinesales.com> domain name in bad faith under 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).
Thirdly, Complainant asserts that Respondent had constructive and actual knowledge of Complainant’s rights in the OAKLEY mark. Complainant argues that its numerous trademark registrations with the USPTO provided Respondent with constructive notice. Constructive notice is generally not sufficient to establish bad faith registration under Policy ¶ 4(a) (iii). See Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."). However, Complainant also contends that Respondent’s actual knowledge of Complainant’s rights in the OAKLEY mark is evidenced by Respondent’s sale of counterfeit products and Respondent’s use of the OAKLEY mark and logo at the resolving website. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the OAKLEY mark when Respondent registered the disputed domain name and, accordingly, the Panel determines that Respondent registered the <oakleyonlinesales.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the OAKLEY mark, adding to it the words “online” and “sales” and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oakleyonlinesales.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 13, 2012
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