The Complainant is Oakley Inc. of Washington, United States of America represented by Weeks, Kaufman, Nelson & Johnson, Esq. of California, United States of America.
The Respondent is Li Susanto of Indonesia.
The disputed domain name <gudangoakley.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2010. On April 1, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 2, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on April 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 3, 2010.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on May 17, 2010. 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.
The following summary sets out the uncontested factual submissions made by the Complainant:
(a) The Complainant is the owner of the trade mark OAKLEY and has registered the trade mark in various classes in over 100 countries worldwide including the United States and Indonesia.
(b) The trade marks registered in Indonesia include the following:
9, 14, 18, 25
9, 14, 18, 25
(c) The Indonesian term “gudang”, as used in the disputed domain name, means “warehouse” in the English language.
(d) The disputed domain name resolves to a website which purports to offer for sale OAKLEY branded glasses.
(a) The Complainant contends that the disputed domain name is confusingly similar to the OAKLEY trade mark in which the Complainant has rights.
(b) The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:
(i) there is no evidence to indicate that the Respondent has any rights to the “Oakley” trade mark or name.
(ii) there is no evidence to show that the Respondent is commonly known by the name “Oakley”.
(iii) it does not appear that the Respondent is using the domain name for a legitimate non-commercial or fair use.
(c) In relation to the requirement of bad faith registration and use of the disputed domain name, the Complainant contends as follows:
(i) the domain name was registered primarily for the purpose of trading on the enormously successful goodwill of the Complainant as it is a famous eyewear brand throughout the world.
(ii) the Complainant employs a very tight distribution system selling only to brick and mortar and online retailers that have been specifically approved by the Complainant. The Complainant's Brand Enforcement Department has determined that the Respondent is obtaining authentic OAKLEY products through unauthorised channels.
(iii) by using the disputed domain name, the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent's by creating a likelihood of confusion as to the affiliation, sponsorship or endorsement of the Respondent's website.
The Respondent did not reply to the Complainant's contentions.
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate rights in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
The Complainant has adduced sufficient evidence to prove that it has rights to the OAKLEY trade mark. The Complainant has also adduced evidence to prove that it owns various registrations of the OAKLEY trade mark in Indonesia, the country in which the Respondent bears an address.
The term “gudang”, which forms part of the disputed domain name, is an Indonesian generic word which means “warehouse” in English. Therefore, a literal translation of the disputed domain name would be “warehouseoakley”. The issue is whether the addition of the generic term would suffice to defeat the Complainant's claim that the disputed domain name is confusingly similar to the Complainant's trade mark.
There have been numerous WIPO UDRP decisions on the issue of incorporating generic terms with a trade mark in a domain name. The issue often turns to the question of whether the addition of the generic term would change the overall impression of the domain name as being connected to the Complainant or the trade mark owned by the Complainant. In 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 panel held that the addition of various generic terms to the complainant's PEPSI trade mark did not change the overall impression that the disputed domain names were connected to the Complainant. Hence, the panel determined that the various disputed domain names in the complaint <pepsiarcade.com>, <pepsiadventure.com>, <pepsivolleyball.com>, <pepsisail.com>, <pepsisuperbike.com>, <pepsitennis.com>, <pepsiworldcup.com>, were confusingly similar to the complainant's PEPSI trade mark.
In this Complaint, the disputed domain name fully incorporates the OAKLEY trade mark. The additional word “gudang” (or “warehouse” in English) does not appear to distract a reasonable person's overall perception or impression of the distinctive feature of the disputed domain name, being OAKLEY. To a person who understands the Indonesian term “gudang”, the overall impression which is created is that it is a warehouse for Oakley products. Thus, the distinctive element of the Complainant's OAKLEY trade mark would prevail over the addition of the Indonesian generic term. In such instance, the disputed domain name becomes confusingly similar to the OAKLEY trade mark.
Accordingly, this Panel concludes that the disputed domain name is confusingly similar to the OAKLEY trade mark, in which the Complainant has sufficiently proven that it has rights to.
The Complainant's assertions had not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests to the disputed domain name. There was also no evidence to indicate that the Respondent was known by the name “Oakley”.
The Complainant has adduced sufficient evidence that the disputed domain name is being used solely for commercial gain. The website located at “www.gudangoakley.com” clearly suggests that the Respondent is using the website to promote the sale of OAKLEY branded products.
The Complainant further confirms that the Respondent has not been authorised to sell OAKLEY branded products or to use the OAKLEY trade mark given that it is not an authorised distributor or retailer of the Complainant.
The failure of the Respondent to reply to the Complainant's contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel could find not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain name.
Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
It appears that the OAKLEY trade mark was calculatively selected by the Respondent to form the disputed domain name in order to disrupt the Complainant's ongoing business, to extract some form of direct or indirect commercial gain or to otherwise ride on the established goodwill of the Complainant.
The print-outs from the website located at “www.gudangoakley.com” clearly shows that the Respondent is engaged in the business of selling and distributing what appear to be OAKLEY branded products. The Panel notes that the Complainant's brand department determined that the Respondent were selling genuine OAKLEY products obtained from unauthorised channels. The Panel further notes that the Respondent advertises the sale of OAKLEY replicas on its website. Through the contents of the website, it also appears that the Respondent may be recruiting resellers through an affiliation programme.
As contended by the Complainant, these activities would harm the potential customers of the products because the warranties are void and the customers do not receive proper use and care instructions for the products. Moreover, as the disputed domain name is being used to facilitate the sale of diverted OAKLEY branded products, the businesses of the Complainant's authorised distributors and retailers would be negatively impacted.
By incorporating wholly the Complainant's OAKLEY trade mark long after the mark has attained fame, it is suggestive of bad faith on the part of the Respondent. Bad faith can be found where a domain name “is so obviously connected with such a well known product that its very use by someone with no connection with the product suggests opportunistic bad faith.” (See Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
The manner in which the Respondent operates its website seems to suggest that the Respondent either wishes to disrupt the Complainant's ongoing business or to seek to generate Internet traffic resulting from the confusion which arises due to the similarities between the Complainant's trade mark and the disputed domain name. In Digital Spy Limited. v Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160, the panel held that “Registering a domain name with knowledge of another company's rights in the name, and with intention to divert traffic is evidence of bad faith.”
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <gudangoakley.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Dated: May 31, 2010