The Complainant is The North Face Apparel Corp. of Delaware, United States of America, represented by Greenberg Traurig, LLP of United States of America.
The Respondent is genuis service / wu sumei, Shanghai, People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names and (“Disputed Domain Names”)are registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2010. On July 29, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the Disputed Domain Names. On July 30, 2010, Xin Net Technology Corp. 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”).
On August 2, 2010, the Center informed the parties of the language of the proceeding. The Complainant requested on the same day that English should be the language of the proceeding. The Respondent wrote to the Center on August 5, 2010 stating in English “we will remove all the content about north face but we have the right to own the domain”. The Respondent subsequently wrote to the Center on August 7, 2010 stating in English “I have removed the site including the north face content, and I will use the domain for non-business”. The Respondent did not comment on the language of the proceeding on both occasions.
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 August 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 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 designs, manufactures and distributes clothing, equipment and footwear under its family of marks which include the words THE NORTH FACE (“Complainant’s Marks”). The Complainant has been using the Complainant’s Marks for over 35 years and expended millions of dollars in advertising and promoting products under the Complainant’s Marks. Registrations of the Complainant’s Marks include the following United States registrations Registration no Registration date
983,624 May 14, 1974
2,097,715 September 16, 1997
2,836,848 April 27, 2004
3,538,773 November 25, 2008
The Panel notes that registration nos 2,836,848 and 3,538,773 comprises the 3 words THE NORTH FACE stacked on top of each other and right justified against a device of an elliptical quadrant (the “Complainant’s Device”).
The Respondent registered the Disputed Domain Names on November 26, 2009. The websites resolved from both Disputed Domain Names purport to offer for sale jackets and gloves under the mark “North Face”. The websites also identify themselves to be “The North Face Sale website” and “a North Face Outlet”. The printouts of these websites submitted by the Complainant show the prominent use of the Complainant’s Device on the websites. When the Panel visited the websites, it was noted that the website resolved from now redirects to another domain . However, that website continues to use the “Complainant’s Device”, identifies itself as “The North Face Sale website” and “a North Face Outlet” and purports to offer for sale jackets under the mark “North Face”. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
(1) The Disputed Domain Names are identical or confusingly similar to the Complainant’s Marks. The Complainant’s Marks are well known. The addition of the generic word “buy” to the words THE NORTH FACE does not avoid the likelihood of confusion between the Disputed Domain Names and the Complainant’s Marks;
(2) The Respondent lacks any rights or legitimate interest in the Disputed Domain Names. The Complainant has not authorized the Respondent to manufacture or sell goods using the Complainant’s Marks and the use of the Complainant’s Marks on the Respondent’s websites are without authorization; and
(3) The Disputed Domain Names were registered and used in bad faith. The Respondent is intentionally using the Disputed Domain Names to attract for commercial gain Internet users to his websites by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship affiliation, or endorsement of its websites. The websites are offering counterfeit products for sale and are using photographs which copyright belongs to the Complainant without permission. B. Respondent
No formal Response was filed between the commencement of proceeding and the due date for Response. The Panel has noted the Respondent’s bare assertion of a right to own the Disputed Domain Name on August 5, 2010 and the Respondent’s removal of its website and will take these circumstances into account for these proceedings. 6. Discussion and Findings 6.1 Language of Proceeding
In relation to the question of whether the Panel should determine that English be the language of the proceeding instead Chinese being the default language, the Panel notes the following:
(1) The Complainant is a North American corporation which conducts its business principally in English;
(2) The websites resolved from the Disputed Domain Names contain content that is exclusively in English and show that the Respondent has opted to communicate to the world at large in English;
(3) The communication of the Respondent to the Center on August 5, 2010 and August 7, 2010 are exclusively in English and show that the Respondent is reasonably proficient in the English language. It is evident from the communication that the Respondent understands the full import of the proceedings;
(4) The Respondent has been given ample opportunity and has chosen not to object to English as the language of the proceeding. The Respondent has in fact responded informally to the Complaint in English before the commencement of proceeding; and
(5) Insisting on Chinese as the language of the proceeding is unlikely to serve any purpose or result in any benefit to the proceeding. It may instead cause unnecessary cost to the Complainant and delay to the proceeding.
In view of the circumstances, the Panel hereby determines pursuant to paragraph 11 of the Rules that English shall be the language of the proceeding. 6.2 Decision
To succeed in the proceeding, the Complainant must show:
(1) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(3) The Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
In view of the trade mark registrations for the Complainant’s Marks, the Panel has no doubt that the Complainant has rights in the Complainant’s Marks.
It is an established principle that a domain name which incorporates a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is regarded as confusingly similar to the trademark. In particular, words like “store”, “shop”, “buy” prefixed or suffixed to a trademark in a domain name have consistently been held to be unable to distinguish the domain name from the trademark (e.g., Lacoste Alligator S.A. v. Priscilla, et al, WIPO Case No. D2010-0988). The Panel does not see any special circumstance in this case to determine otherwise. The words THE NORTH FACE remains readily recognizable as such in the domain name despite the addition of the word “buy” as a suffix. The word “the” is merely an article in English grammar. Its absence in the domain name does not help to distinguish the domain name from the mark THE NORTH FACE.
The Panel holds that the Disputed Domain Names are confusingly similar to the Complainant’s Mark and the first limb of paragraph 4(a) is satisfied. B. Rights or Legitimate Interests
To establish the second limb of paragraph 4(a) of the Policy, it is not necessary for the Complainant to go beyond showing a prima facie case for the Respondent to rebut. The Complainant’s right in the Complainant’s Marks is undisputed. The Complainant has also confirmed that it has not authorized the Respondent to use the Complainant’s Marks. In the absence of any explanation, the generous use of the Complainant’s Mark on the Respondent’s websites in association with products within the scope of rights in the Complainant’s Marks package is questionable. The Respondent holds itself out as “a North Face outlet” and must have been aware of the Complainant’s Marks. It is determined that a prima facie case under the second limb of paragraph 4(a) has been made out by the Complainant.
The bare assertion by the Respondent that it has the right to own the Disputed Domain Names in his communication of August 5, 2010 is unsupported by any evidence. The promise by the Respondent that “North Face” content would be removed and claim that the same has been removed contradicts any claim to such rights. In any event, the Panel notes that the Respondent did not keep his promise. The websites resolved from the Disputed Domain Names continue to refer to “North Face” content.
The failure of the Respondent in submitting any meaningful rebuttal to the prima facie case leads to the inevitable conclusion of the second limb of paragraph 4(a) being established. C. Registered and Used in Bad Faith
The Complainant has asserted that the Complainant’s Marks are well-known by reason of long and extensive use over 35 years. Although extensive evidence was not submitted, the Panel is prepared to consider prima facie that the Complainant’s Marks are well-known. The Respondent’s websites, in targeting Internet users, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or of products on the websites, reflect a reasonable likelihood of opportunistic bad faith registration and use exemplified in past panel decisions (e.g., Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing,WIPO Case No. D2010-0746).
Paragraph 4(b)(iv) of the Policy identifies an instance of bad faith registration and use:
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
The offering for sale of jackets and gloves on the websites are clearly directed at commercial gain. The unauthorized use of the Complainant’s Marks on the websites and the Disputed Domain Names will undoubtedly create a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites and products. The present circumstances clearly fall within the ambit of paragraph 4(b)(iv).
In the circumstances, the Panel determines that the third limb of paragraph 4(a) is also established.
The Panel refrains from making any finding on whether the photographs on the Respondent’s websites infringe the copyright in the photographs owned by the Complainant as such matters are outside the scope of the Policy. Regardless, the adoption of photographs on a respondent’s website which are identical to those found on a complainant’s website without justification will certainly go towards showing an intention to promote and/or create a likelihood of confusion with the complainant’s trademark. In the present case, the Complainant has not identified any specific photographs on the Respondent’s websites or on the Complainant’s website and the Panel is simply not armed with sufficient information to consider this issue further. In any event, it is unnecessary to do so in view of the determination above. 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.
Kar Liang Soh
Sole Panelist
Dated: September 17, 2010
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