WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION O, Inc. v. Dustin Saunders Case No. D2009-1034 1. The Parties
The Complainant is O, Inc. of Salt Lake City, Utah, United States of America.
The Respondent is Dustin Saunders of Los Angeles, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Web Solutions Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2009. On August 3, 2009, the Center transmitted by email to HiChina Web Solutions Ltd. a request for registrar verification in connection with the disputed domain name. On August 5, 2009, HiChina Web Solutions Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
On August 5, 2009, the Center transmitted an email to the parties in English and in Chinese concerning the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on August 8, 2009. The Respondent did not file any submissions with respect to the language of the proceeding by the due date.
The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on August 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 2, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent's default on September 3, 2009.
The Center appointed Sebastian Hughes as the sole panelist in this matter on September 14, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background A. The Complainant
The Complainant is a US company and the owner of several registrations for trade marks comprising the words OVERSTOCK.COM in the United States of America and Canada, including registrations for the word mark OVERSTOCK.COM registered in the United States of America since 2001 (“the Trade Marks”).
The Complainant is also the owner of many domain names comprising the Trade Marks, including . B. The Respondent
The Respondent is an individual apparently with an address in the United States of America.
The disputed domain name was registered on January 13, 2009. 5. Parties' Contentions A. Complainant
The following facts are alleged by the Complainant in the Complaint and have not been disputed by the Respondent.
The Complainant was founded in 1997 and is a leader in the business of online retail of discounted brand name merchandise and other products. The Complainant also operates an online auction site and an online site for listing cars for sale.
The Complainant is publicly listed on the Nasdaq stock exchange and had annual revenue in 2008 of USD834.47 million.
(1) The Disputed Domain Name is Confusingly Similar to the Complainant's Marks
The disputed domain name is confusingly similar to the Trade Marks, as it wholly incorporates the OVERSTOCK.COM trade mark.
(2) The Registrant has no Rights or Legitimate Interests in the Disputed Domain Name
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or authorised the Respondent to register or use the OVERSTOCK.COM trade mark in any way.
The Respondent has never been commonly known by the disputed domain name and has no trade mark rights in respect of the disputed domain name.
The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The Respondent is using the website to which the disputed domain name is resolved (“the Website”) to sell counterfeit golf clubs, among other goods. The manufacturers of the golf clubs featured on the Website have advised the Complainant that none of them supply any goods to the Respondent.
(3) The Respondent Registered and is Using the Disputed Domain Name in Bad Faith
The Website originally reproduced an exact replica of the Complainant's red stylised OVERSTOCK.COM trade mark.
The Respondent has utilised the Complainant's stylised “O” logo on the Website.
The Respondent has engaged in a pattern of conduct of registering domain names comprising well-known trade marks, such as .
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Website, by creating a likelihood of confusion with the OVERSTOCK.COM trade mark as to the source, sponsorship, affiliation or endorsement of the Website or a product or service on the Website. B. The Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for, inter alia, the following reasons:
(1) The Respondent has an anglicised name and the registration address is in Los Angeles, California;
(2) The Website, and all other know websites of the Respondent, are in English;
(3) The Complainant is an English speaker;
(4) The Respondent has indicated by his response to communications from CitizenHawk (including by temporarily taking down the Website) that he responds to and proceeds to act based on communications in English.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
On August 5, 2009, HiChina Web Solutions Ltd. transmitted by email to the Center its verification response confirming that the language of the Registration Agreement is Chinese.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, this Panel determines under paragraph 11(a) that English shall be the language of the proceeding. 6.2 Decision
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The domain name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The 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. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration.
The disputed domain name comprises the OVERSTOCK.COM trade mark in its entirety. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of the disputed domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The addition of the generic word “seller” does not serve to distinguish the disputed domain name in any way.
The Panel finds that the designation “overstock[].com” is the distinctive part of the disputed domain name and the additional word “seller” does not diminish the similarity between the disputed domain name and the Trade Marks. The Panel finds that the disputed domain name is confusingly similar to the Complainant's OVERSTOCK.COM trade mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent's registration of the disputed domain name by over 10 years. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
The Complainant has asserted that the Website was used by the Respondent to market unauthorised, counterfeit goods. There can be no legitimate interest in the sale of counterfeits (Lily ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750).
At some stage following receipt of the Complaint, the disputed domain name was resolved to an inactive website. The disputed domain name is currently being “passively” held by the Respondent.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website.
The Website previously offered for sale counterfeit goods under the Trade Marks. This is strong evidence of bad faith. (Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
The Panel therefore concludes that the Respondent's registration and use of the disputed domain name falls under paragraph 4(b)(iv).
At some stage after receipt of the Complaint, the Respondent changed the Website from a website offering for sale of counterfeit products under the Trade Marks to an inactive website. The Panel finds this conduct provides further evidence of bad faith.
Furthermore, it has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028). The Panel finds that this amounts to additional grounds for finding bad faith on the part of the Respondent.
The Complainant has asserted that the Website reproduced the Complainant's stylised “O” logo owned by the Complainant. The Panel finds that this amounts to additional grounds of bad faith.
In this case, the failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
Finally, it appears the Respondent has engaged in a pattern of conduct in registering domain names comprising well-known brands. The Complainant has referred in the Complaint to a registration apparently in the name of the Respondent for the domain name .
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: September 25, 2009
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