World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ECCO Sko A/S v. Protected Domain Services Customer ID: NCR-2448048 / jizhiteam

Case No. D2010-1113

1. The Parties

The Complainant is ECCO Sko A/S of Bredebro, Denmark, internally represented.

The Respondent is Protected Domain Services Customer ID: NCR-2448048 of Denver, Colorado, United States of America / jizhiteam of New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <51ecco.com> (the “Disputed Domain Name”) is registered with Name.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2010. On July 6, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 7, 2010, 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 July 8, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. In reply to this email, the Complainant indicated its desire not to amend the Complaint on July 9, 2010. 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 July 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2010.

The Center appointed Kar Liang Soh as the sole panelist in this matter on August 11, 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.

4. Factual Background

The Complainant is incorporated in Denmark and is a shoe company with global sales and manufacturing in Thailand, Indonesia, the People’s Republic of China and Slovakia. The Complainant has registered the trademark ECCO in more than 100 countries worldwide, including the following:

Jurisdiction Registration no

Europe (CTM) 179317

United States of America 1935123

People’s Republic of China 208743

International Registration 686103

The Complainant did not provide any information regarding the registration dates of the trademark registrations for ECCO. The Panel referred to the WIPO ROMARIN database and noted that international trademark registration 686103 was registered on January 26, 1998. The Complainant also owns the domain names <ecco.com> and <ecco.eu>.

The Disputed Domain Name was registered on March 31, 2010, more than a decade after international trademark registration 686103. The Respondent was identified originally as “Protected Domain Services Customer ID: NCR-2448048” but the Registrar clarified that the Respondent’s purported identity is apparently “jizhiteam”. Not much is known about the Respondent beyond the Registrar’s clarification of the WhoIs information and the Respondent’s website resolved from the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(1) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The essential part of the Disputed Domain Name is identical to the Complainant’s trademark;

(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has not granted any licence to use the trademark ECCO to the Respondent; and

(3) The Disputed Domain Name was registered and is being used in bad faith. The website resolved from the Disputed Domain Name offers for sale fake shoes under the Complainant’s trademark ECCO. The Disputed Domain Name is used to cause harm to the Complainant by misleading customers into believing they are buying original shoes from of the Complainant. The Respondent is taking undue advantage of the well-known trademark ECCO.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the following to be established in order for the Complainant to succeed in this proceeding:

(1) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(3) The Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the trademark ECCO in view of the trademark registrations. The Disputed Domain Name incorporates the entirety of the Complainant’s trademark ECCO, the only difference being the prefix “51”.

A domain name which incorporates a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is regarded by many past UDRP panels to be confusingly similar to the trademark (e.g., Vibram S.p.A. v. Peng Zhen, WIPO Case No. D2010-0952; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746; and Birkenstock Orthopädie GmbH & Co. KG v. ugg outlets, WIPO Case No. D2010-0771).

The Disputed Domain Name incorporates the entirety of the Complainant’s trademark ECCO. It is the Panel’s view that the prefix “51” does not impart any significant difference to the Disputed Domain Name to distinguish it from the Complainant’s trademark ECCO. The Disputed Domain Name is accordingly confusingly similar to the Complainant’s trademark ECCO.

The first limb of paragraph 4(a) is established.

B. Rights or Legitimate Interests

Past panels have consistently held that a complainant needs only show a prima facie case that a respondent does not have rights or legitimate interests in a disputed domain name, following which the respondent has to rebut the case.

The Complainant has confirmed that it has not licensed the use of the trademark ECCO to the Respondent. In the absence of any explanation, the use of the Complainant’s trademark ECCO on the Respondent’s website in relation to shoes cannot be coincidental. The Respondent has in all likelihood adopted the Complainant’s trademark ECCO deliberately.

The Complainant has made very strong assertions that the Respondent’s goods are “fake”, which the Panel understands the Complainant to mean that the Respondent’s goods are counterfeit. The Respondent’s failure to respond strongly suggests that the Respondent has no legitimate interest in the Disputed Domain Name.

In the circumstances, the Panel concludes prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Since no Response was filed, the prima facie conclusion remains and the second limb of paragraph 4(a) is established.

C. Registered and Used in Bad Faith

The Complainant has asserted that its trademark ECCO is well-known. Unfortunately, the Complainant has not provided sufficient evidence supporting such an assertion, and the Panel is unable to making such a finding in the circumstances based on the available information.

The Respondent appears to have taken effort to conceal its identity. As explained by the Registrar, the Respondent was using its “whois protection service”. Even though the Registrar revealed the particulars of the Respondent pursuant to the proceeding, it was established by the failed attempts to contact the Respondent that these particulars are not valid. The circumstances are such that they lead the Panel to the inevitable conclusion that the Respondent has provided fictitious information to the Registrar because the Respondent does not wish to be located.

An applicant for registration of a domain name has a duty to act honestly. The deliberate use of fictitious and/or ineffective contact particulars to register a domain name without any valid reason is bad faith and the subsequent use of the domain name is tainted by the bad faith (see Farouk Systems Inc. v. David, WIPO Case No. D2009-1245). In the present case, the Respondent has used fictitious information in registering the Disputed Domain Name.

The use of the Disputed Domain Name to sell products alleged to be counterfeits under the Complainant’s trademark ECCO seems to be the only explanation before the Panel for the Respondent’s adoption of the Disputed Domain Name. The Respondent has chosen not to deny such a serious allegation, and the Panel draws an adverse inference that the products purveyed on the Respondent’s website are likely to be counterfeit products. The finding of bad faith registration and use above is further corroborated by this inference.

In the circumstances, the Panel determines that the third limb of paragraph 4(a) is also established.

7. Decision

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 <51ecco.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Dated: September 3, 2010

 

Explore WIPO