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 Zhang Bao of Beijing / Putian City, Fujian Province, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2010. On January 4, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On January 5, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 5, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On January 12, 2011, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified 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 Respondent of the Complaint, and the proceedings commenced on January 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2011.
The Center appointed Yijun Tian as the sole panelist in this matter on February 15, 2011. 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 A. The Complainant
The Complainant is a company incorporated in the United States of America. The Complainant is the owner of the trademark OAKLEY and has registrations for said trademark in over 100 countries worldwide, including the United States (14 registrations between August 27, 1985 and October 10, 2006) and China (10 registrations). The Oakley brand is a famous eyewear brand known throughout the world. B. The Respondent
The Respondent registered the disputed domain name on October 13, 2010, and used the website to sell Oakley branded products. 5. Parties’ Contentions A. Complainant
The Complainant requests the Panel issue a decision that the disputed domain name be transferred to the Complainant. The Complainant’s main arguments are the following: (i) The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The Complainant is the owner of the trademark OAKLEY and has registrations for said trademark in over 100 countries worldwide.
- The Complainant has 14 registrations for the "Oakley" name in United States between 1986 and 2006.
- The Complainant has the name "Oakley" registered in China as well. (ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
- No evidence that Respondent has any rights in the OAKLEY trademark nor that the Respondent has been commonly known by the disputed domain name.
- No evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name without the intent for commercial gain misleading to divert consumers or tarnish the trademark at issue. (iii) The disputed domain name was registered and is being used in bad faith.
- The disputed domain name has been registered primarily for the purpose of trading on the enormously successful goodwill of the Complainant, Oakley, Inc.
- The Respondent has registered the disputed domain name for the sole purpose of seeking commercial gain by depicting and attempting to sell counterfeit Oakley products on its website.
- The Respondent’s actions divert consumers from authorized Oakley dealers, both retail shops and Internet websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English. The Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
1) The website at the disputed domain name herein is an English based website (copies of pages from the website are attached to the initial Complaint as Annex 8.)
2) Insofar as, it seems reasonable that this proceeding should be conducted in English.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “Overview”) further states: “in certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement” (Overview, paragraph 4.3; L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that the Complainant is an English private limited company, incorporated in the United States, and the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name includes English phrases (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that (a) The disputed domain name has been registered in English, rather than Chinese script; (b) the website at the disputed domain name is an English based website and the Respondent is doing business in English through this website; (c) the website appears to have been directed to users worldwide rather than solely Chinese speakers; (d) the subject matter of the website which includes the Oakley Sunglasses Notice and payment methods (both were written in fine English) suggests that the Respondent has an sufficient knowledge of English and would not be prejudiced should English be the language of these proceedings; (e) the Center has notified the Respondent of the proceedings in both Chinese and English; (f) the Center informed the Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark OAKLEY (the “Trade Mark”) acquired through registration. The Trade Mark has been registered worldwide including in China.
The disputed domain name comprises the Trade Mark in its entirety. Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Case No. 0500065). Moreover, the Complainant and the Trade Mark enjoy a widespread reputation with regard to its sunglasses products.
Thus, the Panel finds that the use of the suffix “-sunglasses-online” is not sufficient to negate the confusing similarity between the disputed domain name and the Trade Mark.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that the Respondent has commonly been known by the disputed domain name; and
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG , DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; Overview, paragraph 2.1)
The Complainant has prior rights in the Trade Mark (since 1985) which precede the Respondent's registration of the disputed domain name (in 2010) by over 25 years. According to the Complainant, the Respondent is not an authorized dealer of Oakley products. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. There has been no evidence adduced to show that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “Oakley” in its business operations. There has been no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use the Trade Mark or to apply for or use any domain name incorporating the Trade Mark;
2. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that the Respondent has any registered trademark rights with respect to the disputed domain name. The Respondent registered the disputed domain name as an individual on October 13, 2010.
3. There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the Respondent is offering Oakley brand products for sale through the website in dispute (Annex 8 to the Complaint).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 website or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith. 1. Registered in Bad Faith
The Panel finds that the Complainant enjoys a widespread reputation in the Trade Mark with regard to its sunglasses products. It is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. The Panel therefore finds that the Trade Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra). Moreover, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant’s products. 2. Used in Bad Faith
The Complainant claimed that the Respondent attempted to sell counterfeit Oakley products on its website, and said “it has been determined by Oakley's investigators that the products being sold are counterfeit”. However, the Complainant has not provided sufficient evidence to prove the products being sold are counterfeit. Nevertheless, this does not prevent the Panel from using other evidence to determine whether the disputed domain name was used by the Respondent in bad faith.
The Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites offering the Complainant’s sunglasses products.
To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the Trade Mark, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annex 8). In order words, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Trade Mark. Noting aosl that apparently no clarification as to the Respondent’s relationship to the Complainant is made on the homepage of the disputed domain name, potential partners and end users are led to believe that the website “www.” is either the Complainant’s site or the site of official authorized partners of the Complainant, which it is not. Moreover, the Respondent has not responded to the Complaint. The Panel therefore concludes that the disputed domain name was used by the Respondent in bad faith.
In summary, the Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainant’s widely known trademarks, intended to ride on the goodwill of the Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) 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.
Yijun Tian
Sole Panelist
Dated: February 23, 2011
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