World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The North Face Apparel Corp. v. Chen Bin a/k/a cheanbin or chenbin

Case No. D2010-1267

1. The Parties

The Complainant is The North Face Apparel Corp. of Wilmington, Delaware, United States of America, represented by Greenberg Traurig, LLP, United States of America.

The Respondent is Chen Bin a/k/a cheanbin or chenbin of Beijing, People’s Republic of China.

2. The Domain Names and Registrar

The disputed domain names <cheap-northface.com> and <northfacecanada.com> (“Disputed Domain Names”) are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2010. On July 30, 2010, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the Disputed Domain Names. On August 3, 2010, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 4, 2010, the Center transmitted a communication by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.

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 August 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2010.

The Center appointed Kar Liang Soh as the sole panelist in this matter on September 14, 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 designs, manufactures and distributes clothing, equipment and footwear under its family of marks which include the words THE NORTH FACE (“Complainant’s Marks”). The Complainant has been using the Complainant’s Marks for over 35 years and expended millions of dollars in advertising and promoting products under the Complainant’s Marks. Registrations of the Complainant’s Marks include the following United States registrations:

Registration No. Registration date

983,624 May 14, 1974

2,097,715 September 16, 1997

2,836,848 April 27, 2004

3,538,773 November 25, 2008

The Panel notes that registration Nos. 2,836,848 and 3,538,773 comprises the 3 words THE NORTH FACE stacked on top of each other and right justified against a device of an elliptical quadrant (the “Complainant’s Device”).

The Respondent registered the Disputed Domain Names on June 10, 2010. The websites resolved from both Disputed Domain Names purport to offer for sale jackets and gloves under the mark “North Face”. The websites also identify themselves to be “a North Face Outlet”. The websites further acknowledge that the Complainant’s Marks are famous and well-known. The printouts of these websites submitted by the Complainant show the prominent use of the Complainant’s Device on the websites. When the Panel visited the websites, it was noted that the Disputed Domain Names <cheap-northface.com> and <northfacecanada.com> now redirect to the domain names <cheapjacketssales.com> and <canadajackets.com>. However, the content of the websites remain similar, still identifying themselves as “a North Face Outlet”, using the Complainant’s Device and purporting to offer for sale jackets under the Complainant’s Mark.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(1) The Disputed Domain Names are identical or confusingly similar to the Complainant’s Marks. The Complainant’s Marks are well-known. The addition of the generic word “cheap” or the geographical term “Canada” does not avoid the likelihood of confusion between the Disputed Domain Names and the Complainant’s Marks;

(2) The Respondent lacks any rights or legitimate interests in the Disputed Domain Names. The Respondent is trading upon the goodwill and reputation in the Complainant’s Mark by misleading consumers into believing the Respondent’s websites and products therein are affiliated with or endorsed by the Complainant. The Respondent is using the Disputed Domain Names to sell counterfeits of the Complainant’s products; and

(3) The Disputed Domain Names were registered and used in bad faith. The Respondent is intentionally using the Disputed Domain Names to attract for commercial gain Internet users to his websites by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship affiliation, or endorsement of its websites. The websites are offering counterfeit products for sale.

B. Respondent

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

6. Discussion and Findings

6.1 Language of Proceeding

The Complainant requested that English be used as the language of the proceeding instead of Chinese which is the default language. In considering this request, the Panel notes the following:

(1) The Complainant is a Northern American corporation which conducts its business principally in English;

(2) The websites resolved from the Disputed Domain Names contains content that is exclusively in English and show that the Respondent has opted to communicate to the world at large in English;

(3) The Respondent has been given ample opportunity and has chosen not to object to English as the language of the proceeding, leading the Panel to find that the Respondent would not be prejudiced by a decision to proceed in English; and

(4) Insisting on Chinese as the language of the proceeding is unlikely to serve any purpose or result in any benefit to the proceeding. It may instead cause unnecessary cost to the Complainant and delay to the proceeding.

In view of the circumstances, the Panel hereby determines pursuant to paragraphs 10 and 11 of the Rules that English shall be the language of the proceeding.

6.2. Decision

To succeed in the proceeding, the Complainant must show:

(1) The Disputed Domain Names are 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 Names; and

(3) The Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

In view of the trademark registrations for the Complainant’s Marks, the Panel has no doubt that the Complainant has rights in the Complainant’s Marks.

It is an established principle that a domain name which incorporates a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is generally regarded as confusingly similar to the trademark. In particular, words like “cheap”, “store”, “shop”, “buy” prefixed or suffixed to a trademark in a domain name have consistently been held to be unable to distinguish the domain name from the trademark (e.g., Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna, WIPO Case No. D2010-0988). The Panel does not see any special circumstance in this case to determine otherwise. The Complainant’s Mark remains readily recognizable as such in the Disputed Domain Name <cheap-northface.com> despite the addition of the prefix “cheap”. Similarly the word “Canada” in the Disputed Domain Name <northfacecanada.com> does nothing more than to provide a generic geographical description. The word “the” is merely an article in English grammar. Its absence in the Disputed Domain Names does not help to distinguish the Disputed Domain Names from the mark THE NORTH FACE.

The Panel holds that the Disputed Domain Names are confusingly similar to the Complainant’s Mark and the first limb of paragraph 4(a) is satisfied.

B. Rights or Legitimate Interests

To establish the second limb of paragraph 4(a) of the Policy, it is not necessary for the Complainant to go beyond establishing its prima facie case, at which time the responsibility of providing rebuttal evidence shifts to the Respondent. The Complainant’s rights in the Complainant’s Marks is undisputed. Although the Complainant has not expressly stated that it has not authorized the Respondent to use the Complainant’s Marks, the implication from the content of the Complaint is unmistakable. In particular, the Complainant asserts that the goods offered on the websites resolved from the Disputed Domain Names are counterfeits. These goods could hardly be said to be counterfeits if the Respondent were authorised to apply the Complainant’s Mark on these goods.

In the absence of any explanation, the generous use of the Complainant’s Mark on the Respondent’s websites in association with products within the scope of rights in the Complainant’s Marks package is questionable. The Respondent holds itself out as “a North Face outlet” and must have been aware of the Complainant’s Marks. The Panel has determined that a prima facie case under the second limb of paragraph 4(a) has been made out by the Complainant.

In view of the failure of the Respondent to respond, the Panel concludes that the second limb of paragraph 4(a) has been established.

C. Registered and Used in Bad Faith

The Complainant has asserted that the Complainant’s Marks are well-known by reason of long and extensive use over 35 years. The Panel is prepared to consider prima facie that the Complainant’s Marks are well-known. In particular, the Respondent has admitted to the fame of the Complainant’s Mark on the Respondent’s websites.

The Respondent’s websites, in targeting Internet users, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or of products on the websites, reflect a reasonable likelihood of opportunistic bad faith registration and use exemplified in past panel decisions (e.g., Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746).

Paragraph 4(b)(iv) of the Policy identifies an instance of bad faith registration and use:

“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”

The offering for sale of jackets and gloves on the websites is clearly directed at commercial gain. The unauthorized use of the Complainant’s Marks on the websites and the Disputed Domain Names will undoubtedly create a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites and products. The Panel does not doubt that the present circumstances fall within the ambit of paragraph 4(b)(iv).

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 Disputed Domain Names <cheap-northface.com> and <northfacecanada.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Dated: October 8, 2010

 

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