Oakley, Inc. v. jack lee
Claim Number: FA1206001451145
Complainant is Oakley, Inc. (“Complainant”), represented by Donna Sandidge of Sandidge IP, Inc., California, USA. Respondent is jack lee (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oakley-shoponline.com>, registered with Shanghai Yovole Networks Inc.
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 June 28, 2012; the National Arbitration Forum received payment on June 28, 2012. The Complaint was submitted in both Chinese and English.
On June 28, 2012, Shanghai Yovole Networks Inc. confirmed by e-mail to the National Arbitration Forum that the <oakley-shoponline.com> domain name is registered with Shanghai Yovole Networks Inc. and that Respondent is the current registrant of the name. Shanghai Yovole Networks Inc. has verified that Respondent is bound by the Shanghai Yovole Networks Inc. 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 July 6, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 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@oakley-shoponline.com. Also on July 6, 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 August 1, 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 makes the following contentions.
1. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its OAKLEY mark, namely:
Reg. No. 1,356,297 registered Aug. 27, 1985;
Reg. No. 1,519,596 registered Jan. 10, 1989;
Reg. No. 1,519,823 registered Jan. 10, 1989;
Reg. No. 1,521,599 registered Jan 24, 1989;
Reg. No. 1,522,692 registered Jan. 31, 1989;
Reg. No. 1,552,583 registered Aug. 22, 1989;
Reg. No. 1,908,414 registered Aug. 1, 1995;
Reg. No. 1,980,039 registered June 11, 1996;
Reg. No. 2,293,046 registered Nov. 16, 1999;
Reg. No. 2,409,789 registered Dec. 5, 2000;
Reg. No. 3,143,623 registered Sept. 12, 2006;
Reg. No. 3,153,943 registered Oct. 10, 2006; &
Reg. No. 3,771,517 registered April 6, 2010.
2. Respondent’s <oakley-shoponline.com> domain name is confusingly similar to Complainant’s OAKLEY mark and features Complainant’s full OAKLEY mark with the addition of the generic terms “shop” and “online” and the (“gTLD”) “.com.”
3. Complainant owns several domain names, including <oakley.com>, <oakley.co.uk> and <oakley.it> that resolve to Complainant’s websites.
4. Complainant used the OAKLEY mark before Respondent made the <oakley-shoponline.com> domain name.
5. Respondent registered the <oakley-shoponline.com> domain name on March 13, 2012, more than 25 years after Complainant’s first registration for the OAKLEY mark.
6. Complainant’s OAKLEY mark is famous.
7. Respondent has no rights or legitimate interest in the OAKLEY mark.
8. Complainant has not authorized or licensed Respondent to manufacture, sell or offer for sale Complainant’s products.
9. Respondent uses the <oakley-shoponline.com> domain name to sell counterfeit products featuring Complainant’s mark, which does not constitute a bona fide offering of goods or a legitimate noncommercial or fair use.
10. The WHOIS information identifies “Jack Lee” as Respondent and therefore Respondent is not commonly known by the <oakley-shoponline.com> domain name.
11. Respondent is diverting Internet users seeking Complainant’s business to the <oakley-shoponline.com> website where Respondent presumably obtains commercial benefits through the sale of counterfeit products bearing Complainant’s OAKLEY mark.
12. Respondent registered the <oakley-shoponline.com> domain name in order to create a likelihood of confusion as to the source, sponsorship, and affiliation with its <oakley-shoponline.com> domain name and products.
13. Based on the fame of Complainant’s OAKLEY mark and Respondent’s efforts to sell counterfeit products, Respondent had knowledge of Complainant’s business and the OAKLEY mark.
14. By reason of the matters aforesaid, the domain name has been registered and used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company with a successful business which manufactures, distributes and sells sports eyewear, apparel and other prestigious products, using its OAKLEY mark.
2. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its OAKLEY mark, details of which appear above.
3. Respondent registered the <oakley-shoponline.com> domain name on March 13, 2012 and uses it to sell counterfeit products featuring Complainant’s mark.
LANGUAGE OF PROCEEDINGS
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. Complainant formed its business in 1975 and since then has manufactured, distributed, and been a retailer of sports eyewear, apparel and other such products, using its OAKLEY mark. Complainant submits that it has rights in the OAKLEY mark pursuant to Policy ¶ 4(a) (i). Complainant presents evidence of its trademark registrations with the USPTO for its OAKLEY marks:
Reg. No. 1,356,297 registered Aug. 27, 1985;
Reg. No. 1,519,596 registered Jan. 10, 1989;
Reg. No. 1,519,823 registered Jan. 10, 1989;
Reg. No. 1,521,599 registered Jan 24, 1989;
Reg. No. 1,522,692 registered Jan. 31, 1989;
Reg. No. 1,552,583 registered Aug. 22, 1989;
Reg. No. 1,908,414 registered Aug. 1, 1995;
Reg. No. 1,980,039 registered June 11, 1996;
Reg. No. 2,293,046 registered Nov. 16, 1999;
Reg. No. 2,409,789 registered Dec. 5, 2000;
Reg. No. 3,143,623 registered Sept. 12, 2006;
Reg. No. 3,153,943 registered Oct. 10, 2006; &
Reg. No. 3,771,517 registered April 6, 2010.
Based on Complainant’s numerous registrations with the USPTO, the Panel finds that Complainant has established 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 Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel notes that to establish rights in a mark a complainant need not register the mark in the country in which the respondent resides or operates. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OAKLEY mark. Complainant claims that Respondent’s <oakley-shoponline.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name contains Complainant’s OAKLEY mark in its entirety with the addition of the generic terms “shop” and “online.” Additionally, Complainant states that Respondent adds the (“gTLD”) “.com.” The Panel notes that Respondent also adds a hyphen between Complainant’s OAKLEY mark and the additional generic terms. Previous panels have found that these distinctions are insufficient to differentiate a disputed domain name from a mark. See 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.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a) (i)). Based on this analysis, the Panel finds that Respondent’s <oakley-shoponline.com> domain name is confusingly similar to Complainant’s OAKLEY mark pursuant to 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 the generic terms “shop” and “online” which do nothing to diminish the confusing similarity that exists between the domain name and the trademark;
(b) Respondent has then decided to use the domain name to resolve to an unauthorized website promoting counterfeit products based on Complainant’s products;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant asserts that Respondent has no rights or legitimate interests in the <oakley-shoponline.com> domain name. Complainant further states that Respondent is not commonly known by the <oakley-shoponline.com> domain name and that the WHOIS information identifies Respondent as “Jack Lee.” Complainant claims that it has not authorized or licensed Respondent to use or register a domain name fully incorporating Complainant’s OAKLEY mark. The Panel notes that there is no further evidence that Respondent is commonly known by the disputed domain name and therefore the Panel concludes that Respondent has no rights and legitimate interests pursuant to Policy ¶ 4(c) (ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
(e) Complainant contends that Respondent does not have a legitimate interest in the <oakley-shoponline.com> domain name and does not make a bona fide offering of goods or services. Complainant argues that OAKLEY is a well-known and famous mark and using it without authorization does not create a legitimate interest. Complainant further contends that Respondent prominently displays its OAKLEY mark while selling counterfeit sunglasses also featuring the OAKLEY mark and icon logos. Previous panels have found that selling counterfeit versions of a complainant’s products is not a legitimate noncommercial or fair use or a bona fide offering of goods. See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s use of a confusingly similar domain name to sell counterfeit products 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)); see also Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011)(“Respondent’s sale of counterfeit versions of Complainant’s merchandise via the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.”). For those reasons, the Panel agrees with the submission of Complainant and so finds.
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 maintains that Respondent has registered and is using the <oakley-shoponline.com> domain name in bad faith pursuant to Policy ¶ 4(b) (iv). Complainant contends that Respondent is using a confusingly similar domain name and diverting Complainant’s customers to Respondent’s resolving website where Respondent obtains commercial benefits by selling Complainant’s counterfeit products featuring Complainant’s mark. Previous panels have held that attracting consumers to a website through a confusingly similar domain name and benefiting commercially through counterfeit products constitutes bad faith pursuant to Policy ¶ 4(b) (iv). See CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding that where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b) (iv)); see also C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent to have registered and used the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood that Internet users may find a respondent’s website whilst searching for the complainant’s website, become confused as to the affiliation with or sponsorship of the disputed domain name to the complainant, and purchase goods through the disputed domain name rather than through the complainant).
Secondly, Complainant also contends that in light of the fame and notoriety of Complainant's OAKLEY mark, it is inconceivable that Respondent could have registered the <oakley-shoponline.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Complainant also argues that Respondent’s use of the disputed domain name to sell counterfeit products indicates that Respondent had actual knowledge of Complainant, its product and its mark. The Panel notes that arguments based on constructive notice are generally regarded as insufficient to support a finding of bad faith. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a) (iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Thirdly, 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 and in view of the conduct that Respondent engaged in when using it, 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 <oakley-shoponline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 3, 2012
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