WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Oakley Inc. v. Li Qi Case No. D2010-0970 1. The Parties
The Complainant is Oakley Inc. of Foothill Ranch, California, United States of America, represented by Weeks, Kaufman & Johnson, United States of America.
The Respondent is Li Qi of Shanghai, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2010. On June 14, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 15, 2010, GoD, Inc.. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on June 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 7, 2010. 4. Factual Background 4.1 The Complainant
4.1.1. The Complainant produces the well-known OAKLEY brand of sunglasses in respect of which it has trademarks registered in over 100 countries worldwide. Set out below are its registrations for OAKLEY in the United States, the earliest of which dates from 1985.
Trademark
Registration No.
Registered
Class
OAKLEY
1,356,297
August 27, 1985
9,12,25
OAKLEY
1,519,596
January 10, 1989
9
OAKLEY
1,519,923
January 10, 1989
18
OAKLEY
1,521,599
January 24, 1989
9
OAKLEY
1,522,692
January 31, 1989
25
OAKLEY
1,552,583
August 22, 1989
9, 12
OAKLEY (w/ellipsoid o)
1,902,660
July 4, 1995
16
OAKLEY (stretched)
1,908,414
August 1, 1995
16
OAKLEY (stretched)
1,980,039
June 11, 1996
9, 25
OAKLEY
1,990,262
July 30, 1996
9,25
OAKLEY
2,293,046
November 16, 1999
25
OAKLEY
2,409,789
December 5, 2000
14
OAKLEY (stretched)
2,875,361
August 17, 2004
9, 25
OAKLEY (Rx)
3,153,943
October 10, 2006
9
4.1.2. The Complainant also has the registered trademarks in China, which are set out below. The Respondent is located in China.
Trademark
Registration No.
Class
OAKLEY (standard character)
646514
9
OAKLEY (standard character)
644894
18
OAKLEY (standard character)
646837
25
OAKLEY (stretched logo)
1473745
9
OAKLEY (stretched logo)
4923420
9
OAKLEY (stretched logo)
1450142
25
OAKLEY stretched w/ellipse
852548
9
OAKLEY stretched w/ellipse
3552735
14
OAKLEY stretched w/ellipse
4017498
16
OAKLEY stretched w/ellipse
859776
25
4.1.3. The Complainant is also the proprietor of the domain name which resolves to a website illustrating and advertising its sunglasses. That domain name was created on January 18, 1995. 4.2 The Respondent
4.2.1. In the absence of a Response, all that is known about the Respondent is what is set out in the Complaint.
4.2.2. The disputed domain name was created on June 25, 2009. It resolves to a website which appears to offer genuine Oakley sunglasses. All the sunglasses depicted are referred to under the OAKLEY brand. For example, “Oakley Active Sunglasses”; “Oakley Sport Sunglasses” etc. The sunglasses depicted on the first page of the Respondent's website appear to be identical to the Oakley sunglasses depicted on the first page of the Complainant's website. The similarity of the two websites is striking.
4.2.3. The Complainant says that the sunglasses offered on the Respondent's website as OAKLEY branded sunglasses are, in fact, counterfeit.
4.2.4. The Complainant says that it has addressed several demands to the Respondent to stop selling such counterfeit products but, notwithstanding such demands, the Respondent continues to sell the counterfeit. 5. Parties' Contentions 5.1 Complainant Identical or Confusingly Similar
5.1.1. The disputed domain mane comprises the Complainant's registered trademark OAKLEY with the descriptive suffix “sunglassessale”. That suffix, comprising the words, “sunglasses” and “sale” conjoined, does nothing, the Complainant says, to distinguish the disputed domain name from their OAKLEY trademark. Accordingly, the Complainant's case is that the disputed domain name is confusingly similar to the OAKLEY trademark. Rights or Legitimate Interest
5.1.2. There is no evidence, the Complainant says, that the Respondent can demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply. Registered and Use in Bad Faith
5.1.3. As to registration in bad faith, the Complainant says that the Respondent must have been aware of the world famous OAKLEY brand when the disputed domain name was created in June, 2009. Indeed, since the website to which the disputed domain name responds offers counterfeit Oakley sunglasses, it is clear - the Complainant says - that the Respondent registered the disputed domain name for the purpose of trading illegally on the famous OAKLEY brand.
5.1.4. As to use in bad faith, despite the “several demands” to stop such use sent by the Complaint (referred to in paragraph 4.2.4. above), the Respondent has continued to offer counterfeit Oakley sunglasses on the website to which the disputed domain name resolves.
5.1.5. In the circumstances, it is plain - the Complainant says - that the Respondent's conduct falls within paragraph 4(b)(iv) of the Policy evidencing registration and use in bad faith 5.2 Respondent
As noted, no Response has been filed.1 6. Discussions and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant has established that it has rights in the OAKLEY trademark dating back to 1985. That mark is known worldwide as the brand of the Complainant's well known sunglasses.
6.6 The suffix “sunglassessale” to the disputed domain name does nothing to distinguish that domain name from the Complainant's OAKLEY trademark. Consequently, the disputed domain name is confusingly similar to the Complainant's OAKLEY trademark.
6.7 Accordingly, the Complainant satisfies the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.8 It is plain from the uncontested evidence set out in the Complaint - namely, that the Respondent is using the disputed domain name to resolve to a website which offers counterfeit Oakley sunglasses - that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and further that the use to which the disputed domain name is being put by the Respondent is neither a legitimate noncommercial or fair use. Indeed, since the products offered are counterfeit Oakley sunglasses, the disputed domain name is being used by the Respondent for commercial gain to misleading divert customers into believing that the website is offering genuine Oakley sunglasses.
6.9 Accordingly, there is no evidence that the Respondent can demonstrate rights or legitimate interests in the disputed domain name and the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.10 In the light of the circumstances set out in the Complaint (which are summarised in paragraphs 4.2.2. to 4.2.4. and 5.1.3. and 5.1.4. above) all the evidence points to the circumstances set out in paragraph 4(b)(iv) of the Policy being present in this case. Accordingly, the Complaint meets the two requirements of 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 domain name be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: July 26, 2010
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