ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Dakine IP Holdings LP v. Chang Zhang Case No. D2022-4426 1. The Parties The Complainant is Dakine IP Holdings LP, United States of America ("United States"), represented by Tucker & Latifi, LLP, United States. The Respondent is Chang Zhang, China. 2. The Domain Name and Registrar The disputed domain name (the "Domain Name") is registered with Name.com, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 18, 2022. On November 21, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 28, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name and providing the contact details. The Complainant filed an amended Complaint on November 30, 2022.1 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 proceedings commenced on December 2, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 23, 2022. 1 The Complainant removed the domain name from the original Complaint upon receipt of the Center's notice of multiple underlying registrants dated November 29, 2022. page 2 The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 3, 2023. 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 company specialized in the production of backpacks, travel accessories, sports clothing, footwear, and sports gear. It was founded in Hawaii, United States, in 1979 by Rob Kaplan, a surfer and craftsman. The Complainant is the owner of numerous DAKINE trademark registrations, including: - the United States Trademark Registration DAKINE No. 3644469 registered on June 23, 2009; - the Chinese Trademark Registration DAKINE No. 33716928 registered on June 21, 2019; and - the European Union Trade Mark Registration DAKINE No. 011320033 registered on April 12, 2013. The Complainant maintains and operates "www.dakine.com" as its primary retailing site on the Internet. The Domain Name was registered on August 4, 2022. As of the date of this Decision, as well as at the time of submitting the Complaint, the Domain Name has resolved to a website offering the goods under the DAKINE brand for sale (the "Website"). 5. Parties' Contentions A. Complainant The Complainant requests that the Domain Name be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case. First, the Complainant submits that the Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights. Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Name. Third, the Complainant submits that the Domain Name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows: (i) the Domain Name 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 the Domain Name; and page 3 (iii) the Domain Name has been registered and is being used in bad faith. The requested remedy may only be granted if the above criteria are met. At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the "balance of probabilities" or "preponderance of the evidence". See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). A. Identical or Confusingly Similar The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights. The Complainant holds valid DAKINE trademark registrations. The Domain Name incorporates this trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696). The addition of the term "-sale" in the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant's DAKINE trademark. UDRP panels have consistently held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element. See section 1.8, WIPO Overview 3.0. The Top-Level Domain ("TLD") ".com" in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1, WIPO Overview 3.0. Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant's trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: (i) that it has used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or (ii) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or (iii) that it is making a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case. On the contrary, it results from the evidence in the record that the Complainant's DAKINE trademark registrations predate the Respondent's registration of the Domain Name. There is no evidence in the case record that the Complainant has licensed or otherwise permitted the Respondent to use the DAKINE trademark or to register the Domain Name incorporating this trademark. There is also no evidence to page 4 suggest that the Respondent has been commonly known by the Domain Name. Moreover, it results from the evidence in the record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, as well as it does not make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain. On the contrary, the Website is using images from the Complainant's advertisement campaigns and from the Complainant's official online site, and copies language from the Complainant's official online site. Furthermore, the Domain Name is used to attract Internet users to the Website offering the DAKINE branded goods for sale at an allegedly discounted rate without the Complainant's authorization. The Complainant believes that those goods are counterfeit. Such use of the Domain Name does not confer rights or legitimate interests on the Respondent. Furthermore, the Panel finds that the Domain Name is inherently misleading. See section 2.5.1, WIPO Overview 3.0. Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant's prima facie case. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith. Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark. See section 3.1, WIPO Overview 3.0. Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes without limitation: (i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-ofpocket costs directly related to the domain name; or (ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or (iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location. As indicated above, the Complainant's rights in the DAKINE trademark predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant's trademark at the time of registration of the Domain Name. This finding is supported by the content of the Website falsely suggesting that it is an official Complainant's website or of an entity affiliated to or endorsed by the Complainant such as its official retailer. Moreover, it has been proven to the Panel's satisfaction that the Complainant's DAKINE trademark is well known and unique to the Complainant. Thus, the Respondent could not likely reasonably ignore the reputation of products under this trademark. In sum, the Respondent in all likelihood registered the Domain Name with the expectation of taking advantage of the reputation of the page 5 Complainant's DAKINE trademark. Moreover, the Domain Name is used in bad faith by the Respondent to attract Internet users to the Website offering the DAKINE branded goods for sale at an allegedly discounted rate, which are believed to be counterfeit by the Complainant. By reproducing the Complainant's DAKINE trademark in the Domain Name, as well as displaying this trademark together with the Complainant's official products' images and descriptions on the Website, the Respondent intends to profit from the confusion created with Internet users, as it suggests association with the Complainant. In consequence, the Panel finds that the evidence in the record demonstrates that the Respondent uses the Domain Name deliberately in order to take advantage of the Complainant's reputation and to give credibility to its services. In sum, this Panel finds that the Respondent uses the Domain Name in an attempt to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the DAKINE trademark as to the source, sponsorship, affiliation, or endorsement of the Website or the activity carried out through the Website by the Respondent. For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under 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 Domain Name be transferred to the Complainant. /Piotr Nowaczyk/ Piotr Nowaczyk Sole Panelist Date: January 17, 2023
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