WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Oakley, Inc. v. Joel Wong/BlueH- INC Case No. D2010-0100 1. The Parties
The Complainant is Oakley, Inc. of Foothill Ranch, California, United States of America, represented by ATMD Bird & Bird LLP, Singapore.
The Respondent is Joel Wong/BlueH- INC of Provo, Utah, United States of America and Singapore. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2010. On January 22, 2010, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On January 22, 2010, FastDomain, 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. The Center sent an email communication to the Complainant on January 27, 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 31, 2010. The Complainant filed an amendment to the amended Complaint on February 3, 2010. The Center verified that the Complaint together with the amended Complaint and amendment to the 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 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 25, 2010.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 8, 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, which is a corporation organised and existing under the laws of the United States of America, is dealing in fashion goods and accessories.
The Complainant has trademark registrations all over the world for OAKLEY including in the apparent country of residence of the Respondent Joel Wong. The trademark registrations cover various classes of the international classification of goods and services, including but not limited to, protective and/or anti-glare eyewear and cases for such eyewear, jewellery and time pieces, leather goods, bags, umbrellas, wallets, card holders and related goods and clothing, headwear and footwear.
On March 25, 2009, the Respondent registered the disputed domain name. 5. Parties' Contentions A. Complainant A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), 3(b)(ix)(1))
The disputed domain name incorporates the entirety of the Complainant's OAKLEY mark, together with the generic terms “www” and “spree”. The most prominent part of the disputed domain name is the OAKLEY mark. An Internet user would be likely to assume that the disputed domain name and/or operator of the same are somehow sponsored by, or associated with the Complainant, when they are not.
By registering a domain name which incorporates the whole of the OAKLEY mark together with the generic terms “www” and “spree”, the Respondent is attempting to capitalize on the Complainant's OAKLEY brand. A registrant that simply adds numerals and/or generic terms to a complainant's trademark does not avoid a finding that the domain name is confusingly similar to a trademark in which the complainant has rights. B. The Respondent has no rights or legitimate interests in respect of the domain name
(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))
It is respectfully submitted that the Respondent has no rights or legitimate
interests in respect of the domain name, because:
(a) the Respondent has not used or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and in any event cannot do so given the Complainant's fame;
(b) the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks or apply for any domain names incorporating the trademarks. The Complainant does not have any relationship with the Respondent;
(c) the Respondent is not commonly known by the disputed domain name – in any event, the disputed domain name bears no resemblance whatsoever to the Respondent's name;
(d) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent (1) for commercial gain, (2) to misleadingly divert consumers or (3) to tarnish the Complainant's OAKLEY mark.
It is reiterated that the Respondent has not used or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name was only registered in 2009, long after the Complainant had adopted the OAKLEY mark.
Further, the Respondent has constructive knowledge of the OAKLEY mark, as a trademark search for “Oakley” and/or “Oakleyspree” would have revealed the Complainant's registration of the OAKLEY mark in the United States, Singapore and elsewhere around the world.
Further, the Respondent has actual knowledge of the Complainant's registrations for the OAKLEY mark. Prior to the filing of this Complaint, the Complainant had on May 26, 2009 sent a cease and desist letter to the Respondent's address in Singapore by registered post and by email, demanding that the Respondent remove all infringing images (taken from the Complainant's website) and all references to the Complainant's OAKLEY mark. Although no reply was received by the Complainant, all of the infringing images were removed by May 27, 2009. C. The domain name was registered and is being used in bad faith
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
It is respectfully submitted that the Respondent registered the disputed domain name in a blatant attempt to capitalize unfairly on the fame of the OAKLEY mark.
The term “Oakley” does not have any meaning and the Respondent could not have registered the disputed domain name to refer to its own goods or services.
The first registration of the OAKLEY mark in Singapore was in 1990. The disputed domain name was only registered by the Respondent in March 2009.
Further, as stated above, the Complainant had on May 26, 2009 sent a comprehensive cease and desist letter to the Respondent's address in Singapore, resulting in the removal (at that time) of all infringing images and references to the Complainant's OAKLEY mark. The Respondent therefore had actual or constructive notice of the Complainant's trademark rights, and could not have been unaware of the Complainant's rights in the same. Actual or constructive knowledge of the Complainant's rights in its trademarks is a factor supporting bad faith.
In addition, the Complainant's OAKLEY mark is a well-known trademark, given its strong reputation and international recognition. The registration of a well-known trademark of which the Respondent must reasonably had been aware constitutes bad faith.
Finally, the Respondent's failure to acknowledge or reply to the Complainant's cease and desist letter of May 26, 2009 compounds the Respondent's bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate. A. Identical or Confusingly Similar
In this case the disputed domain name consists of the widely known trademark OAKLEY and the addition of the generic word “spree” and the “.com” top level designation. The incorporation of a well-known trademark in its entirety as a dominant part of a domain name has been found in previous panel decisions to be confusingly similar to this trademark regardless of whether the additional elements express endorsement, are pejorative or are of a more neutral kind such as “spree”. In this context the Panel explicitly wants to stress that the standard for finding confusing similarity under the first element of the Policy, which is a rule specifically designed to address UDRP cases, is not the same standard as for finding trademark infringement.
This Panel finds that the domain name is confusingly similar to the established and internationally widely-known trademark OAKLEY. Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark. Under the circumstances present in this case, the burden of proof of rights or legitimate interests must lie with the Respondent.
The Panel recognises that there may be situations where the registration and use of a domain name that specifically refers to and incorporates the trademark of another entity may serve legitimate purposes. The fact that the Respondent seems to offer products originating from the Complainant on the website makes it relevant to consider whether this can be legitimate or fair use of the Complainant's mark.
In the view of this Panel, it is a recognized principle of trademark law that an agent or reseller that is engaged in the legitimate sale and distribution of trademarked goods does not per se have any rights to register the said trademark as its trademark, business name or domain name without explicit consent of the trademark owner, cf. the principles of Article 6 septies of the Paris Convention. This principle also applies for the Respondent's commercial activities in the present case. Even if the Respondent was engaged in legitimate although not specifically authorized sales of the Complainant's products, and thus might, under certain circumstances, have a legitimate interest in and rights to use the trademark for promoting these goods, this does not, in this Panel's view, establish such rights or legitimate interests for the purpose of these proceedings and present circumstances that may legitimize registration of the disputed domain name.
The Panel has reviewed quite a number of UDRP decisions on this issue, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.3, such as Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095; Motorola, Inc. v. NewGate Internet, Inc.,WIPO Case No. D2000-0079; DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; and Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481. The Panel would like to note that even if it was to endorse the view expressed in, e.g., the Oki Data decision, the Oki Data test would in this Panel's view not be applicable in the present matter since the Respondent, among other things, is not an authorized dealer or reseller of the Complainant's (used) products. The Panel further notes in this respect that the observations of the panel in General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi,WIPO Case No. D2007-0645 on the latter issue.
In the circumstances present here, the Respondent's registration and use of the disputed domain names indicates its lack of rights or legitimate interests therein, and consequently the prerequisites in the Policy, paragraph 4(a)(ii) are also considered fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides the requirement to prove registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that may satisfy same.
The Complainant's trademark OAKLEY must be considered to be a well-known trademark in the United States of America and Singapore, a fact that is not disputed by the Respondent. It is therefore inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant's rights and indeed the content of the related webpage on which OAKLEY glasses are offered strongly supports this presumption. It is also clear from the communication between the parties prior to the filing of this Complaint that the Respondent was made aware of the Complainant and of the Complainant's mark before the filing of this Complaint.
The disputed domain name's corresponding website had at the time of filing of the Complaint a rather professional appearance, which was capable of giving the visitor the impression that it was a website that is somehow endorsed by the Complainant. It is also evident that the use of the name OAKLEY refers to the specific products originally manufactured and sold by the Complainant.
Bearing these facts and the facts mentioned above the Panel finds that the disputed domain name has been registered and is being used in bad faith, cf. paragraph 4(a)(iii) and 4(b) of the Policy.
Consequently, all the prerequisites for cancellation or transfer of the disputed domain name according to paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested the Administrative Panel appointed in this administrative proceeding that the disputed domain name be cancelled. 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 cancelled.
Knud Wallberg
Sole Panelist
Date: March 16, 2010
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