Complainant is Spy Optic, Inc. of Carlsbad, California, United States of America, represented by Stetina Brunda Garred & Brucker, United States of America.
Respondent is Thomas Jones of Widefield, Colorado, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2013. On June 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 4, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 5, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same date the Center sent a notification that the Complaint was administratively deficient. Complainant filed an amendment to the Complaint on June 6, 2013.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 28, 2013.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 8, 2013. 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
Complainant was founded and developed in the early-to-mid-‘90s by a group of athletes seeking new and unique designs of technical eyewear. Complainant’s founders patented its technologically advanced eyewear to be used for surfing, snowboarding, skiing, and bicycle, motorcycle and car racing. Today, Complainant continues to create products for athletes involved in action sports and are committed to making the highest quality, most functional, best-looking eyewear. Complainant has also expanded its product line to include sports apparel and accessories.
Complainant owns the following trademarks, among others:
- SPY, United States Trademark No. 1,981,513 for glasses and sunglasses, registered on June 18, 1996 (date of first use 1994);
- SPY, United States Trademark No. 3,750,166 for retail services and on-line retail store services featuring sunglasses, sports goggles and wearing apparel, registered on February 16, 2010 (date of first use 2006);
- SPYOPTIC, United States Trademark No. 3,648,121 for sunglasses, sports goggles, registered on June 30, 2009 (date of first use 2002);
- SPYOPTIC, United States Trademark No. 3648,121 for bags, namely backpacks, and sports bags, registered on June 30, 2009 (date of first use 2001); and
- SPYOPTIC, United States Trademark No. 3,218,701 for wearing apparel namely t-shirts, shirts, sweatshirts, pants, shorts, jackets, hats, visors, caps, belts and shoes, registered on March 13, 2007 (date of first use 2004).
Complainant registered on October 2, 2001 and the domain name resolves to its official website on which its products are advertised and available for purchase.
The Disputed Domain Name was registered on April 2, 2013. 5. Parties’ Contentions A. Complainant
According to Complainant, the Disputed Domain Name is confusingly similar to the distinctive trademarks that it contains. In addition, Complainant alleges that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, as there is no indication of Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Further, Respondent is not commonly known by SPY or SPYOPTIC and Respondent does not use the Disputed Domain Name for a noncommercial or fair use. Finally, Complainant states that Respondent registered and has used the Disputed Domain Name in bad faith. Thus, Complainant seeks the transfer of the Disputed Domain Name from Respondent to Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Disputed Domain Name:
(i) That the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) That Respondent has registered and is using the Disputed Domain Name in bad faith.
These elements are discussed as set forth below. A. Identical or Confusingly Similar
This element consists of two parts: first, does Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that Complainant has established rights in the SPY and SPYOPTIC trademarks based on its United States trademark registrations for those trademarks. The Disputed Domain Name consists of the SPY and SPYOPTIC trademarks plus the descriptive word “sunglasses”, followed by the generic Top-Level Domain (“gTLD”) “.org”. “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Numerous UDRP panel decisions have reiterated that the addition of a descriptive or generic word to a trademark is generally insufficient to avoid confusing similarity. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. See also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923 (The addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America, Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434 (same); Weight Watchers International Inc. v. Kevin Anthony,WIPO Case No. D2011-2067 (same).
This is especially true where, as here, the descriptive or generic word “sunglasses” is associated with Complainant and its services. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusing similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Finally, the addition of a gTLD such as “.org” after a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) has been met by Complainant. B. Rights or Legitimate Interests
Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Respondent’s lack of reply notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant, that Respondent is now or was ever known by the Disputed Domain Name, or that Respondent has any authority, license or permission to use Complainant’s trademarks.
Furthermore, Complainant has not authorized, licensed or otherwise permitted Respondent to use its trademarks. The name of Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which Respondent has rights. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Respondent uses the website to which the Disputed Domain Name resolves to sell Complainant’s goods, whether genuine or counterfeit, without the express authorization of Complainant, and no disclaimer appears on the website. Complainant contends that the goods being offered for sale on the website connected to the Disputed Domain Name are counterfeits of Complainant’s products. Given that there is no Response, and citing Vibram S.p.A .v. Dai Xiu Mei,WIPO Case No. D2010-0846, the Panel considers it unnecessary to decide if the products on sale are counterfeit in this case. Nevertheless, as explained below in section 6.C, the Panel finds that Respondent is improperly using the Disputed Domain Name for commercial gain.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by Complainant. C. Registered and Used in Bad Faith
The Policy identifies the following circumstances that, if found, are evidence of registration and use of the Disputed Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) Respondent has registered the Disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product on Respondent’s website or location.
This Panel finds that Respondent has registered and is using the Disputed Domain Name in bad faith for several reasons.
First, Respondent’s unauthorized advertising and sale of Complainant’s products very strongly suggests that Respondent knew of Complainant’s trademarks prior to registration of the Disputed Domain Name. Thus, it is reasonable to infer from the circumstances of this case that the aim of the registration and use of the Disputed Domain Name is to exploit consumer confusion for commercial gain. It was also done for the specific purpose of trading on the name and reputation of Complainant and its trademarks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law”). Moreover, Respondent’s creation of a website confusingly similar to that of Complainant’s official website very strongly suggests that Respondent knew of Complainant and Complainant’s trademarks prior to registration of the Disputed Domain Name. Thus, it is reasonable to infer from the circumstances of this case that the aim of the registration and use of the Disputed Domain Name was to exploit consumer confusion for commercial gain. This behavior constitutes bad faith registration and use of the Disputed Domain Name under the Policy. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763.
Second, the registration of the Disputed Domain Name reproducing in their entirety the registered trademarks of Complainant is clearly aimed to disrupt Complainant’s business by diverting Internet users who are searching for Complainant’s products from its genuine website as well as to prevent Complainant from registering the Disputed Domain Name. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552.
Third, Respondent’s registration of the Disputed Domain Name after Complainant began to use and widely promote its distinctive trademarks is further evidence in this case that the Disputed Domain Name was registered in bad faith. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by Complainant. 7. Decision
For 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 Complainant.
Lynda M. Braun
Sole Panelist
Date: July 10, 2013
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