WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service Case No. D2010-0093 1. The Parties
The Complainant is Oakley, Inc. of Foothill Ranch, California, United States of America, represented by Weeks, Kaufman, Nelson & Johnson, United States of America.
The Respondent is wu bingjie aka bingjie wu/Whois Privacy Protection Service of Fujian, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2010. On January 21, 2010, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On January 25, 2010, B, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint ( as well as confirming the language of the related registration agreement to be Chinese). The Center sent an email communication to the Complainant on January 25, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 29, 2010. On January 25, 2010, the Center also notified the parties by email in both Chinese and English regarding the language of proceedings. On January 29, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the due date specified by the Center.
The Center verified that the Complaint together with amended Complaint satisfied 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 proceedings commenced on February 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 23, 2010.
The Center appointed C. K. Kwong as the sole panelist in this matter on March 3, 2010. 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
The Complainant is the owner of numerous trade marks consisting of the word OAKLEY. These registrations include, in particular, the following:
(a) United States trade mark registrations (i) No. 1,356,297 which was registered on August 27, 1985 in respect of certain goods under Classes 9, 12 & 25; (ii) No. 1, 519, 823 registered on January 10, 1989 in respect of certain goods under Class 18; (iii) No. 1, 908, 414 registered on August 1, 1995 in respect of certain goods under Class 16; (iv) No. 2, 409, 789 registered on December 5, 2000 in respect of certain goods under Class 14;
(b) Chinese trade mark registration Nos. 646514, 644894 and 646837 in respect of certain goods and services under Classes 9, 18 and 25 respectively.
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid OAKLEY mark in the United States occurred over 20 years before the registration of the disputed domain name on September 30, 2009.
Other than the particulars shown on the printouts of the database searches conducted by the Complainant of the WhoIs database (as provided in Annex 1 to the Complaint), the website of the Respondent (as provided in Annex 6 to the Complainant) and the WhoIs database search results updated to February 2, 2010 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business. 5. Parties' Contentions A. Complainant
The Complainant has made the following contentions:
The Complainant has rights in the trade mark OAKLEY. It has registered the mark in over 100 countries worldwide. Furthermore, the disputed domain name is identical or confusingly similar to the trade mark OAKLEY.
The Complainant claims that the Oakley brand is a famous eyewear brand known throughout the word.
The Respondent's website as shown in Annex 6 to the Complaint offered Oakley brand products which have been determined by Oakley's investigators to be counterfeits.
The Complainant also alleges that the Respondent's website is similar to the Complainant's authentic website thereby deceiving potential customers into believing the website offers authentic Oakley products for sale when they are not.
The Respondent has registered the domain name in dispute to facilitate the sale of counterfeit Oakley products. It is for seeking commercial gain.
The Respondent has intentionally attempted to attract Internet users to its website by creating the impression that the website is authorised or endorsed by the Complainant or is otherwise affiliated with the Complainant.
The Respondent is not an authorised dealer of genuine Oakley products. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex A to the Complaint, which was filed on January 20, 2010 and the WhoIs search result updated to February 2, 2010 as provided by the Center (“the Data Base Records”).
Such contact particulars in the Data Base Records also agree with the answers to Request for Registrar Verification provided by the Registrar to the Centre on January 25, 2010.
On February 2, 2010, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding together with the Complainant and amended Complaint including any annexes to the Respondent in accordance with the contact details above email with copies to the Registrar. The Center also forwarded Written Notice of the Proceedings in accordance with the relevant contact details to the post and facsimile addresses for the Respondent.
Although there were included in the case bundle supplied by the Center (a) undeliverable email notices which indicate that the emails sent to one of the given email addresses were unsuccessful; and (b) fax transmission report showing that the fax communication to one of the fax numbers provided was unsuccessful, all these are due to no apparent fault or omission on the part of the Center. It is further noted that there were no failure reports for transmissions to the fax number of WhoIs Privacy Protection Service and the email address of “wu bingjie aka bingjie wu”. Furthermore, there is no record of return of the shipments of documents by the courier service to the addresses of the Respondent.
It is further noted that the terms and conditions of the relevant registration agreement (in Chinese) attached as Annex 4 to the Complaint contained the following provisions :
(a) Article 4 “In accordance with principles of sincerity and honesty, the Applicant undertakes that the information provided in the domain name registration form is true, complete and accurate. If such information is changed in future, especially in relation to administrative contact, technical contact or billing contact (for example : communication address, telephone number, fax number or e-mail address) changes, Applicant should inform the Registrar within 30 days after the change in such particulars […] breach of such undertaking will constitute a serious breach of contract.”
(b) Article 10 “The Registrar has the right to cancel the domain name under the circumstances set out below :
2. Registration information provided by the Applicant is not true, inaccurate, incomplete or not promptly updated after change; […]”
The Panel finds that as long as the Complainant (or the Center as the case may be) has communicated with the Respondent using the exact contact information which the Respondent has chosen to provide to the Registrar, as reflected in the Database Records, their respective obligations of such communications will be discharged and the Respondent will be bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center. B. Language of Proceedings
In response to the Center's notification in English and Chinese of January 25, 2010 to both parties concerning the language of proceeding, the Complainant filed a request for English to be the language of this administrative proceeding on January 29, 2010.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the registration agreement for the disputed domain name is Chinese as confirmed by the Registrar.
In support of its request, the Complainant has inter alia argued that:
The website to which the disputed domain name resolves is an English based website. So far as the Respondent is doing business in English and its website conducts business in English, it is reasonable for this proceeding to be conducted in English.
The Panel has taken into consideration the fact that (a) the disputed domain name consists entirely of English letters (being a combination of (i) “US” the abbreviation for United States (ii) the English mark of the Complainant and (iii) the English word “shop”); (b) the Respondent has provided the contact details in English to the Registrar; and (c) the entire contents of the website to which the disputed domain name resolves (as shown in Annex 6 to the Complaint) is in English.
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' abilities to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. C. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465.
The said three elements are considered below. 1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trade mark OAKLEY by reason of its various trade mark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark OAKLEY. The addition of the two letters “US” being an abbreviation for United States as a prefix and the English common noun “shop” as a suffix are not sufficient to distinguish the disputed domain name from the Complainant's trade mark OAKLEY. To the contrary, the two letters “US”, being an abbreviation for United States, suggests connection with the United States where the Complainant originates. The English common noun “shop” suggests the commercial nature of the website. It is also well-established practice to disregard the top-level part of a domain name like “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d'Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited,WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established. 2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, there is prima facie evidence of the Complainant's asserted registration and use of the registered trade mark OAKLEY prior to the Respondent's registration of the disputed domain name on September 30, 2009. Further, the Panel notes that the names of the registrant and the registrant organization do not correspond in any way with the domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as . There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
There is no legitimate explanation on the record as to why it was necessary for the Respondent to adopt the word “” in its domain name.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name. 3. Registered and Used in Bad Faith
There is no evidence that the disputed domain name has been actively used by the Respondent as a website for either a legitimate noncommercial or fair use purpose. In the absence of any evidence to the contrary, it appears that the Respondent was not using the domain name for a purpose other than commercial gain.
According to the searches conducted by the Center on February 2, 2010 in accordance with its compliance review obligations under the Policy, while trying to retrieve the “URL:”, the following error was encountered :
“While trying to retrieve the URL:
The following error was encountered:
Unable to determine IP address from host name for
The DNS server returned:
No DNS records
This means that:
The cache was not able to resolve the hostname presented in the URL.”
The printout of the disputed website as shown in Annex 6 to the Complaint contained the following claims or statements :
(a) “Sunglasses, Goggles, and Apparel – Oakley Official Site. – Oakley official site”; and
(b) “Copyright © 2009 Oakley Inc. All Rights Reserved” .
In view of the Complainant's unequivocal assertion that the Respondent is not an authorised dealer of Oakley, the above (i) claim of being the official website of the Complainant; and (ii) use of the Complaint's name in the copyright notice as shown in the website by the operators of the site which is owned by the Respondents would be false claims.
Given the Complainant's uncontradicted claim of registration of its trade mark OAKLEY and apparent use of that mark for upwards of at least 20 years before the registration of the disputed domain name in 2009, there is a strong case for the Respondent to come forward to defend itself. Unfortunately, the Respondent has not come forward with any defence.
In this Panel's view, it is also not possible to foresee any plausible, genuine use of the disputed domain name by the Respondent on the present record.
It is the Complainant's uncontradicted claims that goods of the same types marketed by the Respondent appearing in the website of “www.” are unauthorized copies of the Complainant's products which result in the public being misled into believing that such products, are associated or otherwise connected with the Complainant resulting in damage and injury to them. The Respondent has registered the disputed domain name and allowed the operators of the site, to which the disputed domain name resolves, to use it primarily for selling goods in a way which disrupts the business of the Complainant. On the basis of the evidence adduced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operators of the site in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
The Panel finds that the domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
C. K. Kwong
Sole Panelist
Dated: March 10, 2010
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