The Complainant Oakley, Inc. of Foothill Ranch, California, United States of America, represented by Clement & Ho, United States.
The Respondent is Shi An Liu of Changchun, China. 2. The Domain Name and Registrar
The disputed domain name is registered with CentralNic. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2011. On August 23, 2011, the Center transmitted by email to CentralNic and eNom a request for registrar verification in connection with the disputed domain name. On August 23, 2011, eNom transmitted by email to the Center its verification response disclosing registrant and contact details which differed from the named Respondent and contact information in the Complaint. On August 30, 2011, CentralNic transmitted by email to the Center its verification response disclosing registrant and contact details which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 30, 2011 providing the registrant and contact information disclosed by CentralNic and eNom, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 2, 2011, and a request for extension to amend the Complaint to comply with paragraph 4(a)(i) of the Rules for CentralNic Dispute Resolution Policy (“the Rules”). On September 5, 2011, the Center notified the Parties that the due date for the Complainant to cure Complaint deficiencies had been extended to September 25, 2011. The Complainant filed a second amended Complaint on September 16, 2011. The Center verified that the Complaint and amended Complaints satisfied the formal requirements of the CentralNic Resolution Policy (the “Policy”) and the 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 September 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2011.
The Center appointed Alfred Meijboom as the sole panelist in this matter on October 19, 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
The Complainant is a sport and lifestyle brand that manufactures and distributes high performance sunglasses, prescription lenses and frames, goggles, apparel, footwear, and accessories. As of 1985, the Complainant owns various trademark registrations in over 100 countries for the OAKLEY mark, either in block letters or a stylized pattern, mostly for goods in international classes 9 and 25.
The disputed domain name was registered on October 25, 2010. 5. Parties’ Contentions A. Complainant
The Complainant spends millions of dollars each year to advertise and promote OAKLEY branded products throughout the world through a variety of media, including television, radio, print advertisements, and the Internet. As a result of the Complainant’s extensive and exclusive use, the OAKLEY trademark has developed extensive goodwill in the market and is extremely valuable to the Complainant. The Complainant expends substantial effort and expense to protect the OAKLEY trademark and its distinctiveness in the marketplace. Having been widely promoted to the general public, and having exclusively identified the Complainant’s products, the OAKLEY trademark symbolizes the tremendous goodwill associated with the Complainant and is a property right of incalculable value.
The disputed domain name was registered well after the Complainant established its rights in its OAKLEY marks. The disputed domain name is identical or confusingly similar to the Complainant’s trademarks. This infringing domain name consists of the OAKLEY trademark in plural form followed by “.uk” and then “.com.” These additional extensions, which merely refer to a country (the United Kingdom of Great Britain and Northern Ireland) and the generic “.com” top-level domain do not distinct the disputed domain name from the OAKLEY trademark. The Respondent’s use of the plural form of the Complainant’s OAKLEY marks does nothing to make the disputed domain name non-identical or not confusingly similar, so that the Panel should find that the disputed domain name is identical or confusingly similar to the Complainant’s OAKLEY trademarks.
The Respondent has no rights or legitimate interests in the disputed domain name. No legitimate interests can be found because prior to registration of the disputed domain name the Respondent had constructive notice of the Complainant’s trademarks due to the Complainant’s numerous trademark registrations and the mark's famous status. The Complainant has no relationship or association with the Respondent and the Respondent is not an authorized retailer of OAKLEY branded products. The Respondent did not register the disputed domain name with the consent or approval of the Complainant. Furthermore, the Respondent has never been commonly known by the disputed domain name or more generally the mark OAKLEY. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. Instead, the Respondent uses the disputed domain name for commercial gain by misleading consumers and tarnishing the OAKLEY trademarks. The Respondent has fully incorporated the Complainant’s OAKLEY marks into the disputed domain name for the sole purpose of diverting Internet users from the Complainant’s website (or from other websites using the OAKLEY marks with the Complainant’s permission) to the Respondent’s website. As seen in the Respondent’s website under the disputed domain name, hundreds of OAKLEY-branded products are available for immediate purchase – and all sales made through the disputed domain name are not authorized by the Complainant. Such activities clearly constitute neither fair use nor noncommercial use. Due to the distinctive nature of the Complainant’s OAKLEY marks, and the Respondent's use of the disputed domain name to divert unsuspecting consumers to that website, it is clear that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has registered and used the disputed domain name in bad faith. The OAKLEY marks are famous throughout the world and parties that now register domain names that include the marks should be deemed to have known of the marks and the Complainant’s rights arising from the same prior to registering the domain name. Further aggravating this circumstance is the Respondent’s blatant bad-faith use of merely a plural form of the Complainant’s trademark for the Respondent’s own financial gain through consumer confusion. Such a practice is unduly unfair and a bad-faith attempt to take advantage of the Complainant’s trademarks and its goodwill and reputation. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According paragraph 4(a) of the Policy, the Complaint is only admissible provided that the Complainant has participated in a CentralNic Mediation which involved the disputed domain name and that such mediation has terminated. On September 16, 2011 CentralNic confirmed to the Center that mediation has been carried out, and was unsuccessful. The Panel therefore considers the Complaint to be admissible.
Pursuant to paragraph 5(e) of the Rules, the Panel shall decide the dispute based upon the Complaint because the Respondent did not submit a Response and there appears to be an absence of exceptional circumstance. The Panel shall draw such inferences from the Respondent’s default as it considers appropriate (paragraph 14(b) of the Rules)). The Panel shall therefore award the Complaint if it finds that the Complainant has properly demonstrated the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrates that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has sufficiently demonstrated that it has many trademark rights in the term “Oakley”. It is standard practice that, in comparing the disputed domain name and the trademark or service mark in which the Complainant has rights, the top level domain, which in the present case is “.”, is ignored. In comparing OAKLEY with the relevant part of the disputed domain name, “oakleys”, the only difference is the plural form of the disputed domain name. This does not alter the overall impression of the disputed domain name and does not take away the Panel’s finding that the disputed domain name and the Complainant’s OAKLEY marks are confusingly similar (e.g. LEGO Juris A/S v. Mike Morgan,WIPO Case No. D2009-0438). B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrates that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant claimed that the Respondent has no commercial relationship with the Complainant, and the Respondent was not authorized to register and/or use the disputed domain name. Nor is there any evidence on file that the Respondent was known under the name “oakleys” or another name which is similar to the disputed domain name or the Complainant’s OAKLEY marks. The Panel further agrees with the panel in Oakley, Inc. v. Kate Elsberry, Elsberry Castro,WIPO Case No. D2009-1286, who observed “[n]or could the [r]espondent in the [p]anel's view likely ever become commonly known by either the disputed domain name or the mark without infringing on the exclusive trademark rights of the [c]omplainant”. The Panel considers it also unlikely that the Respondent, who also offered OAKLEY marked goods for sale on the website under the disputed domain name, was unaware of the Complainant’s OAKLEY marks when he registered the disputed domain name.
The Complainant has therefore made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In accordance with the consensus view (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1), once such prima facie case is made, the burden of proof shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. In absence of a Response the Panel is satisfied that the second element of paragraph 4(a) of the Policy was properly demonstrated. C. Registered or Used in Bad Faith
Finally, paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrates that the disputed domain name has been registered or is being used in bad faith.
The Panel is satisfied that this last element also sufficiently demonstrated for the reason already discussed above, that it is likely that the Respondent was aware of the Complainant’s OAKLEY marks when he registered the disputed domain name. The Panel is further satisfied that the Complainant showed that the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the website under the disputed domain name, by creating a likelihood of confusion with the Complainant’s OAKLEY marks as to the source, sponsorship, affiliation, or endorsement of this website and the OAKLEY marked products offered for sale on said website.
The Complainant has therefore also met the last element 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 disputed domain name be transferred to the Complainant.
Alfred Meijboom
Sole Panelist
Dated: October 28, 2011
Full & Egal Universal Law Academy