WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ECCO Sko A/S v. He Shaonan , Lin Zhiyuan, Qinghuo Ou Case No. D2010-0650 1. The Parties
The Complainant is ECCO Sko A/S of Denmark, represented internally.
The Respondents are: He Shaonan, Lin Zhiyuan and Qinghuo Ou of Fujian, the People's Republic of China. 2. The Domain Names and Registrars
The disputed domain names and are registered with Xin Net Technology Corp. and the domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2010. On April 23, 2010, the Center transmitted by email to Xin Net Technology Corp. and B, Inc. a request for registrar verification in connection with the disputed domain names. On April 26, 2010, Xin Net Technology Corp. and B, Inc. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and provided the contact details. On April 28, 2010, the Center notified the Complainant that in the absence of an agreement between the parties, the language of the proceedings will be the language of the registration agreement, i.e. Chinese. On April 29, 2010 the Complainant requested that the language of proceedings will be English. The Respondents did not comment on the language of proceedings by the due date.
The Center verified that the 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 Respondents of the Complaint, and the proceedings commenced on May 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on May 28, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 2, 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, ECCO Sko A/S is a shoe company incorporated in Denmark. The Complainant manufactures shoes in Thailand, Indonesia, China and Slovenia. The Complainant's shoes are sold worldwide.
The Complainant owns multiple trademark registrations for the mark ECCO in many countries around the world. For example: Chinese trademark registration No. 208743 – ECCO with the application date of September 16, 1989; trademark registration No. 1145865 – ECCO, with the registration date of March 16, 1990; United States (hereinafter, “US”) trademark registration No. 1935123 – ECCO, with the registration date of November 14, 1995; Israeli trademark No. 100514, with the registration date of November 11, 1996; Japanese trademark No. 4801814 – ECCO & Design, with the registration date of September 10, 2004; and many others.
The Complainant has also developed a presence on the Internet and is the owner of the following domain names, which contain the mark ECCO: and . The Complainant is using these domain names in connection with its activities.
The disputed domain name was registered by the Respondent Qinghuo Ou on December 20, 2009.
The disputed domain name was registered by the Respondent He Shaonan on February 24, 2010.
The disputed domain name was registered by Respondent Lin Zhiyuan on April 12, 2010.
The disputed domain name resolves to an on-line marketplace, which offers shoes that appear to carry the ECCO mark.
The disputed domain name resolves to a parking webpage, which displays the following announcement: Oops! Internet Explorer could not find .
The disputed domain name resolves to a parking webpage, which displays the following announcement: Oops! Internet Explorer could not find . 5. Parties' Contentions A. Complainant
The Complainant argues that the Respondents are all one and the same and that the disputed domain names are under common control. The Complainant argues that this is evident from the following facts: all of the Respondents reside in Fujian, China, all of the disputed domain names were registered in a short time period of four months and the disputed domain names are very similar.
The Complainant further argues that the Respondents' purpose for registering three disputed domain names was to use and take advantage of the well known ECCO trademark and gain unduly profit from it.
The Complainant further argues that the disputed domain names are identical or confusingly similar to its ECCO trademark, owned by the Complainant, seeing that they incorporate the trademark as a whole.
The Complainant further argues that it does not have a relationship with the Respondents nor has it licensed or permitted the Respondents to use the ECCO mark.
The Complainant further argues that the disputed domain names are likely to mislead or confuse the public as to their source or origin, and the public is likely to believe that the goods sold by the disputed domain names are shoes manufactured by the Complainant, when in fact they are not.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings A. Multiple Respondents
This case raises the question of a Complainant who wishes to peruse multiple Respondents, where the connection between the Respondents is not clear. Previous panels have addressed this issue and found that there are situations when multiple domain name holders can be considered as one.
The Panel cites the following with approval: "As Respondents have elected not to respond, they have not contradicted, inter alia, the assertion of Complainant that, in fact they are aliases of the same person. By virtue of paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it deems appropriate from the Respondent's failure to respond to this assertion" (Country Inns & Suites By Carlson, Inc. v. Shuai Nian Qing, La Duzi,WIPO Case No. D2009-1313).
The Panel finds that the Complainant has provided evidence that indicate a connection between the Respondents. This connection is sufficient to permit the filing of a single Complaint against these multiple domain name holders. Previous panels asserted the following: “A number of panels deciding cases under the Policy have permitted a single complaint in respect of multiple domain names for which the registrants were not the same person, where the circumstances suggested that the registrants (being the named respondents) were controlled by a single entity”. (See Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim,WIPO Case No. Case No. D2009-1345. Also see Asset Marketing Systems, LLC v. SmartBuy Corporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al.,WIPO Case No. D2004-0492 and Dr. Ing. h.c.F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890. ) B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the mark ECCO in many countries around the world. For example: Chinese trademark registration No. 208743 – ECCO with the application date of September 16, 1989; trademark registration No. 1145865 – ECCO, with the registration date of March 16, 1990; United States (hereinafter, “US”) trademark registration No. 1935123 – ECCO, with the registration date of November 14, 1995; Israeli trademark No. 100514, with the registration date of November 11, 1996; Japanese trademark No. 4801814 – ECCO & Design, with the registration date of September 10, 2004; and many others.
The disputed domain name differs from the registered ECCO trademark by the additional words “shoes” and “outlet” and by the additional gTLD “.com”.
The disputed domain name differs from the registered ECCO trademark by the additional words “shoes” and “outlets” and by the additional gTLD “.com”.
The disputed domain name differs from the registered ECCO trademark by the additional words “shoes” and “outlets” and by the additional gTLD “.net”.
The disputed domain names integrate the Complainant's trademark ECCO in its entirety, as a dominant element. The Panel cites the following decision with approval, “[r]espondent's domain name wholly incorporates [c]omplainant's mark […]. Accordingly, it is confusingly similar to a mark in which [c]omplainant has rights” (see Advanced Micro Devices, Inc. v. Piere Macena,WIPO Case No. D2005-0652).
The additional words “shoes”, “outlet” and “outlets” do not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant's ECCO trademark, as they are non-significant elements. Previous UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the domain names from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Further, previous WIPO UDRP panels have asserted that “the mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the gTLD “.com” or “.net” to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD's “.com” and ".net" are without legal significance since the use of a gTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the above disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant had shown that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names, the burden shifts to Respondents to show that they have rights or legitimate interests in respect to the disputed domain names (Policy, paragraph 4(a)(ii)).
In the present case, Complainant alleged that the Respondents have no rights or legitimate interests in respect of the domain names and Respondents have failed to assert any such rights, or legitimate interests.
The Panel finds that Complainant has established such a prima facie case inter alia due to the fact that Complainant has not licensed or otherwise permitted the Respondents to use the ECCO trademark, or a variation thereof. The Respondents have not submitted a Response and did not provided any evidence to show any rights or legitimate interests in the disputed domain names that are sufficient to rebut the Complainant's prima facie case.
Accordingly and in light of the Panel's findings below, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain names. D. Registered and Used in Bad Faith
The Complainant must show that the Respondents registered and are using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii)).
The evidence submitted by the Complainant along with the trademark search performed by the Panel, clearly shows that the Respondents have registered the disputed domain name many years after the Complainant registered its trademarks. This fact is suggestive of Respondents' bad faith (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the Respondent, if by using the domain name he had intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
The disputed domain name currently leads Internet users to a website that promoted the sale of shoes, some of which carried the ECCO mark.
From the evidence submitted by the Complainant, the Panel finds that the disputed domain name used to lead Internet users to a website that promoted the sale of shoes, some of which carried the ECCO mark.
The Respondents' use of the trade name “ECCO” to promote goods that are regularly sold under the ECCO mark clearly evidences that the Respondents registered these disputed domain names with knowledge of the Complainant and of the use the Complainant is making in the mark ECCO and subsequent intent to trade off the value of these. The Respondents' actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondents made in the disputed domain names for quasi identical goods to the ones the Complainant manufacture and markets (as well as seemingly Complainant's counterfeit's good) constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
The disputed domain name currently resolves to a parking webpage, which displays an error announcement. However, the fact that the Respondents have ceased the use of this domain name does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
The disputed domain name is also used in bad faith. This disputed domain name is virtually identical and confusingly similar to the Complainant's trademark. Previous UDRP Panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the use of the ECCO trademark in the domain names and the use made by the Respondents of the disputed domain names, the Panel draws the inference that the disputed domain names were registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondents registered and are using the disputed domain names in bad faith. 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 domain names , and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: June 15, 2010
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