The Complainant consists of Saule, LLC, and 100% Speedlab, LLC, United States of America (“United States” or “US”), represented by Kolitch Romano LLP, United States.
The Respondent is Jiang Lihang, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2021, 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 the Complainant on May 20, 2021, 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 amendment to the Complaint on May 20, 2021. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2021. The Center appointed Clive Duncan Thorne as the sole panelist in this matter on June 25, 2021. 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 well-known sporting goods company based in California, United States, that markets and sells a very successful line of sunglasses and other performance eyewear and sports gear under the mark 100%. It markets and sells sunglasses, other eyewear and sports gear products under that mark in the US and throughout the world including China, Germany, Japan, Spain, Taiwan Province of China, and the United Kingdom. It sells through various channels including in retail shops, mail-order catalogues and through its online retail store located at “www.100percent.com”. The Complainant has invested substantial amounts of time and resources in building, promoting, maintaining, and protecting its rights in the 100% mark. It has obtained trade mark registrations for the mark 100% in the US and internationally. These include; US trade mark no. 4112054 in class 9, registered March 13, 2012; 100% The Complainant also owns US trade mark registrations for 100% plus device which are set out in the Complaint. Copies of the US registration certificates are set out in Annexes 9-21 to the Complaint. The Complainant is also the registered owner of trade mark registrations outside the US examples of which are exhibited in Annexes 25-29 to the Complaint. These are for the mark 100% plus device including International registrations under the Madrid Convention and registrations in Canada and the European Union. The Complainant submits that as a result of its extensive use and promotion of the mark 100% internationally it has built up a “tremendous and valuable” goodwill in the mark in connection with its products. The mark has become well-known and distinctive for the Complainant and its products. In support of this contention the Complainant exhibits evidence, at Annexes 30 to 38 of the Complaint, of reviews of its products demonstrating their wide acclaim in published reviews, industry awards and sponsorships. These include articles in, inter alia, Cycling News, Racer X, Bicycle Retailer, Bike Rumor, What Pros Wear, Bike World News, VeloNews, Bike Radar, Cycling Tips, MTB-MAG and VITAL MTB. By way of example, in 2020 Men’s Health magazine named one of the sunglasses products as the “Best Sports Sunglasses” product. This review is exhibited at Annex 34. The disputed domain name was registered by the Respondent on October 20, 2020, which is well after the dates of registration of the Complainant’s trade marks that it relies upon and when it began trading using the mark 100%. In the absence of a Response the Panel finds the above evidence adduced by the Complainant to be true. 5. Parties’ Contentions A. Complainant The Complainant submits that: i. the disputed domain name is confusingly similar to the mark 100% in which the Complainant has prior rights; ii. on the evidence adduced by the Complainant the Respondent has no rights or legitimate interests in the disputed domain name; iii. on the evidence the disputed domain name was registered and is being used in bad faith by the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar On the basis of the evidence set out in section 4 above the Panel finds that the Complainant owns registered trade mark rights in the mark 100% and that as a result of its trading internationally using the mark in respect of its sunglass products it has acquired a trading goodwill in the mark. The disputed domain name consists of the word “replica”, “100percent” in letters, and the word “sunglasses”. The Complainant submits that the words “replica” and “sunglasses” are “descriptive and / or generic terms” and do nothing to distinguish the disputed domain name and consequently do nothing to prevent the confusing similarity between the disputed domain name and mark 100%. It relies upon WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.8 to the effect that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, perjorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” In the Panel’s view that is the position here. The trade mark 100%, albeit in figurative form, is recognizable within the disputed domain name. The Complainant submits that the fact that the mark 100% is spelled as 100 PERCENT rather than in figurative form in the disputed domain name is inconsequential. It argues that the percentage symbol “%” is incapable of being used as part of a domain name. It submits that consumers would immediately recognize 100% as 100 PERCENT so that the use of 100 PERCENT rather than 100% does nothing to prevent a finding of confusing similarity. In support of this contention it relies upon an earlier panel decision; Cox & Kings Ltd v Mr Manoj,WIPO Case No. D2011-0349 in which it was held that the use of the word “and” in place of the ampersand symbol does not affect confusing similarity, as the word “and” is a mere substitution for the ampersand symbol. This Panel agrees with the principle of that reasoning and although the facts are different finds that in this case the fact that the use of 100 PERCENT in the disputed domain name differs in format from 100% does not prevent a finding of confusing similarity. The Complainant contends that the use of the term “replica” has the effect of further pronouncing the confusing similarity to the mark 100%. It relies upon an earlier panel decision involving the addition of the term “replica”. In Cartier International AG v Chong James,WIPO Case No. D2015-0404 that panel found that the addition of the generic term “replica” did not remove the confusing similarity with the Complainant’s trade mark where the “entire disputed trade mark” had been incorporated in the disputed domain name. In this Panel’s view that is also the position here. On the evidence the Complainant points out that the Respondent’s website is making unauthorized use of the Complainant’s mark 100% even though access to its website is by way of the disputed domain name containing 100 PERCENT. The Panel regards this as additional evidence of the Respondent registering the disputed domain name precisely because it believed there was confusing similarity between the disputed domain name and the Complainant’s trademark. The Panel also takes into account, though it is not raised by the Complainant, that it is well-established that the generic Top-Level Domain (“gTLD”), in this case “.com”, can be disregarded in deciding upon confusing similarity. The Panel therefore finds that The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant. It has not received any license, authorization or permission from the Complainant to use the mark 100%. There is no evidence that the Respondent is commonly known by the disputed domain name or other name that incorporates 100% or 100 PERCENT. Instead the evidence shows that the disputed domain name appears primarily to be registered for the purpose of disrupting and diverting the Complainant’s business and not for any legitimate interest or bona fide or offering of goods or services. The Complainant exhibits at Annexes 39-49 to the Complaint images from the Respondent’s website of the Complainant’s sunglasses bearing the mark 100%. Examples are also set out in the body of the Complaint. The text refers to the mark “100 percent” as used in the disputed domain name, for example; “100percent s2 sunglasses”. To the best of the Complainant’s belief the sunglasses offered are not the Complainant’s genuine products. Rather the Respondent is offering lower priced, inferior quality similar and / or infringing products of the Complainant’s products. This is further evidenced by the Respondent’s use of terms including; “fake”, “replica”, “knockoff”, and “cheap” throughout its website. The website also uses the prominent banner; “REPLICA 100 PERCENT SUNGLASSES, FAKE 100% SUNGLASSES”. It is well-established that such use of the domain name cannot confer rights or legitimate interests on the Respondent. This is summarized at WIPO Overview 3.0, Section 2.13 where it is stated that “panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent. Particularly in the case of counterfeits and pharmaceuticals, this is true irrespective of any disclosure on the related website that such infringing goods are ‘replicas’ or ‘reproductions’ or indeed the use of such term in the domain name itself.” In addition the evidence of the Respondent’s website also shows the use by the Respondent of other trade marks belonging to the Complainant including GLENDALE, RACETRAP, S2, S3, SPEEDCRAFT,and HYPERCRAFT. The Respondent’s website contains numerous images of the Complainant’s products. This is shown in the body of the Complaint where there is a comparison between screenshots from the Respondent’s website and that of the Complainant at “www.100percent.com”. In the absence of evidence to the contrary from the Respondent the Panel, on the basis of the evidence of the Respondent’s website accessed by the disputed domain name, is satisfied that the Respondent’s use of the domain name is primarily for the purpose of disrupting and diverting the business of the Complainant and not for any legitimate interest or bona fide offering of goods or services. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name within Paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant relies upon the evidence of the Respondent’s website set out in section 6.B above as evidence that the disputed domain name was registered and used in bad faith. Additionally; i. based upon the popularity and well-known character of the Complainant and its mark 100% the Respondent knew or should have known of the Complainant and its mark when it registered the disputed domain name; ii. on the evidence the Respondent is intentionally attempting to attract Internet users to its website and diverting them of as to the source, sponsorship, affiliation, or endorsement of the Domain Name’s website, for commercial gain; iii. the Respondent is using a privacy service to hide its identity in order to prevent efficient enforcement of legitimate trade mark rights by the Complainant. The Complainant submits that the fact that the Respondent registered the disputed domain name incorporating 100 PERCENT whilst knowing of the Complainant’s rights is shown by its use of the website to offer similar or infringing products to those of the Complainant and to refer to the Complainant and its products. This is evidenced by the descriptions of the Complainant and its goods on the website as set out in the screenshot exhibited at Annex 40, where it is stated in a reference to the Complainant; “The 100 percent sunglasses is a well known manufacturer of sports products, which originated in the 1980s. The brand name is derived from answering the question, ‘How much effort do you give?’ 100%. They are the second to none racing equipment of the biggest names in motocross.” The Complainant relies upon the evidence of the Complainant’s extensive use and commercial success of its 100% products. It asserts that an Internet search by the Respondent of “100 percent or 100% with sunglasses” would have revealed the Complainant’s presence. In summary, the Complainant submits that on the evidence the Respondent cannot credibly claim to have been unaware of the Complainant’s mark 100% at the date of registration of the disputed domain name. On the evidence and in the absence of a Response the Panel accepts that submission and finds that the disputed domain name was registered in bad faith by the Respondent with knowledge of the Complainant and its rights in the mark 100%. The evidence of the Respondent’s website set out above shows that the Respondent is using the disputed domain name to intentionally attract consumers for commercial gain, by creating a likelihood of confusion with the Complainant’s mark 100% as to its source, sponsorship, affiliation, or endorsement of the disputed domain name’s website for commercial gain within paragraph In the absence of a Response and for the reasons above the Panel finds that the Respondent registered and is using the disputed domain name in bad faith within Paragraph 4(a)(iii) of the Policy. 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, Clive Duncan Thorne
US trade mark no. 1554593 in classes 12 and 16, registered September 5, 1989; 100%
US trade mark no. 6248245 in class 25 registered January 19, 2021; 100%
US trade mark no. 4276127 in class 25 registered April 8, 2014; 100% SPEEDLAB
Sole Panelist
Date: July 5, 2021
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