The Complainant is Columbia Sportswear North America, Inc. of Portland, Oregon, United States of America ("United States"), represented by Schwabe, Williamson & Wyatt, P.C., United States.
The Respondent is Whois Agent of Kirkland, Washington, United States / watches allen of Shanghai, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with N LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 1, 2015. On October 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 2, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 12, 2015.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 4, 2015.
The Center appointed Jane Lambert as the sole panelist in this matter on November 19, 2015. 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 says that it has offered and sold clothing, shoes, sportswear and outdoor related goods and services in the United States under the COLUMBIA SPORTSWEAR mark since 1958 if not earlier and that it is now a global leader in designing, sourcing, marketing and distributing outdoor and active lifestyle apparel, footwear, accessories and equipment. It operates a network of branded retail stores in the United States, Latin America, Asia, Europe and Canada, and its products are sold in over 100 countries, all under the COLUMBIA SPORTSWEAR mark.
An important part of the Complainant's distribution policy is to dispose of excess, discontinued and out-of-season products while maintaining the integrity of its brands in wholesale and distributor channels through retail outlet stores of which it has 74 in the United States alone. Each of those stores trades under the COLUMBIA SPORTSWEAR brand.
The Complainant has registered marks that consist of or include the words "Columbia Sportswear" as trade marks for a wide range of goods and services including sportswear and shoes in the United States and elsewhere. It has mentioned in particular United States trade mark registration number 1,975,556 whereby the words "Columbia Sportswear Company" were registered for items of clothing on May 28, 1996, claiming use back to 1958.
The disputed domain names have been used to resolve to "www." and "www.", which display the Complainant's registered trade mark mentioned above and advertise a range of weatherproof jackets. The websites appear to be calculated to induce members of the public to believe that they were uploaded by or otherwise connected with the Complainant.
According to the WhoIs records, both disputed domain names were registered on September 1, 2014.
Very little is known of the persons responsible for those websites. The disputed domain names were registered in the name of a United States privacy service which disclosed that it held those domain names for a person identified as "watches allen" in Shanghai. There is no indication as to whether "watches allen" is an alias, nickname, firm, corporation or other entity. 5. Parties' Contentions A. Complainant
The Complainant claims to be entitled to the transfer of the disputed domain names for the following reasons.
First, it refers to its trade mark registrations, including the one mentioned above, and its right to bring an action at common law against anyone marketing shoes or running an outlet store under the COLUMBIA SPORTSWEAR mark in the United States. Neither of the disputed domain names may be identical to the Complainant's mark but both are confusingly similar and as the Complainant sells shoes and distributes goods through outlet stores the addition of the words "shoes" and "outlet store" exacerbates rather than diminishes the likelihood of confusion.
Secondly, each of the circumstances listed in paragraph 4(c) of the Policy whereby a respondent can show that it has rights or legitimate interests in a disputed domain name is considered by the Complainant and it concludes that to the best of its knowledge and belief none of those circumstances applies.
Thirdly, the Complainant points to the websites and says that there is abundant evidence of registration and use in bad faith in that the Respondent has used the disputed domain names to resolve to the websites mentioned above, each of which is calculated to induce members of the public to transact business through those websites in the belief that those websites are somehow connected with the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Respondent's registration agreement incorporated by reference paragraph 4(a) of the Policy:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a 'complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that;
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
In the administrative proceeding, the complainant must prove that each of these three elements are present. A. Identical or Confusingly Similar
The Panel finds that the first element is present.
Both disputed domain names incorporate the words "Columbia" and "Sportswear" which are also in the mark COLUMBIA SPORTWEAR COMPANY which is registered at the United States Patent and Trademark Office under registration number 1,975,556. The disputed domain names are not identical to that mark but they are confusingly similar to it and that similarity is enhanced rather than diminished by the additional words "shoes" and "outlet store" since the Complainant sellsshoes and the retailers through which it sells such shoes and indeed other items include outlet stores. B. Rights or Legitimate Interests
The Panel is satisfied that the second element is present.
The Complainant has averred that to the best of its knowledge and belief none of the circumstances listed in paragraph 4(c) of the Policy applies and there is nothing in the Complaint or the materials annexed to it that suggests otherwise. The Respondent had an opportunity to produce evidence or make representations as to why it might have a right or legitimate interest in the disputed domain names and has not taken advantage of that opportunity. The Panel finds that the Complainant has made out a prima facie case and concludes that on the balance of probabilities the Respondent does not have any such rights or legitimate interests in either disputed domain name. C. Registered and Used in Bad Faith
The Panel finds the third element to be present.
Paragraph 4(b) of the Policy lists a number of circumstances which if found to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is as follows:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
The Panel has already found the disputed domain names to be confusingly similar to the Complainant's trade mark. It has therefore created "a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement" of its websites by the use of the disputed domain names. As it is offering garments for sale on the sites its use of the disputed domain names is likely to have been for "commercial gain". The reproduction of the Complainant's trade mark indicates an intention to mislead the public.
In the absence of any evidence to the contrary, the Panel finds on the balance of probabilities that the disputed domain names were registered and are being used in bad faith. 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 names, and , be transferred to the Complainant.
Jane Lambert
Sole Panelist
Date: November 20, 2015
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