WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ECCO Sko A/S v. Jacklee
Case No. D2011-0800
1. The Parties
Complainant is ECCO Sko A/S of Denmark, represented by Bech-Bruun Law Firm, Denmark.
Respondent is Jacklee of Xiamen, Fujian Province, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <eccoshoesaustralia.com> is 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 May 6, 2011. On May 9, 2011, 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 name. On May 11, 2011, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On May 11, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding and invited Complainant and Respondent’s comments by the deadlines of May 14, 2011 and May 16, 2011 respectively. On May 12, 2011, Complainant submitted a request that English be the language of the proceeding, noting that the disputed domain name is composed of Complainant’s trademark and two English language terms, that the content of the disputed domain name was displayed in the English language, and that the disputed domain name offered to conduct transactions in foreign currencies including British Pounds Sterling and American dollars. Respondent did not comment on the language of the proceeding by the May 16, 2011 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 Respondent of the Complaint, and the proceedings commenced on May 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2011. Respondent did not submit any response. Accordingly, the Center confirmed Respondent’s default on June 7, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 14, 2011. 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 language of the Registration Agreement for the disputed domain name is Chinese. In response to Complainant’s arguments that English be recognized as the language of the proceeding and the absence of feedback regarding the language of the proceeding from Respondent, the Center issued its notifications concerning the proceedings in the English and Chinese languages and invited Respondent to answer the Complaint in the English or Chinese languages. Because no response was submitted, this decision is being written in the English language to conform with the language of the Complaint.
4. Factual Background
Complainant is a Danish producer of casual footwear and sells its shoes under the ECCO trademark. Complainant owns trademark registrations for ECCO in multiple jurisdictions including Denmark, the European Community, Australia, the United States of America, and China covering footwear.
The disputed domain name was created on March 17, 2011. Screenshots of webpages from the disputed domain name submitted by Complainant show that the disputed domain name at one time advertised footwear for sale and featured Complainant’s ECCO trademark. The webpage also identified the disputed domain name as “an Australia Ecco shoes Online Stores”.
5. Parties’ Contentions
Complainant claims that its ECCO trademark is well-known due to Complainant’s presence in more than 90 countries and sale of over 250 million pairs of shoes under the ECCO trademark since 1963. Complainant has provided a search engine query showing over 1.8 million hits in response to a search for “Ecco” and “shoes” as evidence of its notoriety. Complainant maintains that Respondent is not an official manufacturer, distributor, or retailer of Ecco products and is not related to Complainant in any way.
Regarding the disputed domain name, Complainant argues that it is confusingly similar to the ECCO trademark in which Complainant has rights because it combines the ECCO trademark in its entirety with the generic term “shoes” and the geographical indicator “Australia”. Regarding bad faith, Complainant alleges that the disputed domain name was registered in an effort to exploit the ECCO trademark and maintains that the products offered for sale at the disputed domain name are counterfeit. Complainant believes that it is unlikely that Respondent was unaware of Complainant’s trademark rights in ECCO when registering the disputed domain name because Complainant’s trademark is well-known and the disputed domain name is being used to sell counterfeit Ecco products.
Based on the above, Complainant has requested transfer of the disputed domain name from Respondent to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
It has been held that the incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name incorporates the trademark ECCO in its entirety with two non-distinctive terms, specifically the term “shoes” which describes Complainant’s goods and the term “Australia” which is the name of a country.
Complainant provides footwear under its ECCO trademark. Therefore, use of the ECCO trademark and the term “shoes” in the disputed domain name increases the likelihood that consumers would believe that the disputed domain name is associated with or somehow related to complainant because “shoes” describes the goods offered under the ECCO trademark. Domain names combining “shoes” and a trademark used for footwear have been found by prior UDRP panels to be confusingly similar to the trademarks at issue. See, e.g. NIKE, Inc. v. Bestinfo, WIPO Case No. D2002-0543 (finding the disputed domain name <nikeshoes.com> confusingly similar to the NIKE trademark) and Lacoste Alligator S.A. v. Major Shopping Network, Ltd, WIPO Case No. D2006-1599 (finding that “shoes” was a descriptive component of the disputed domain name <lacosteshoes.com>).
It has been well established that the use of a geographic term in a domain name does not add distinctiveness. See, e.g., J. Crew International, Inc. v. Li , WIPO Case No. D2011-0665 (finding that the incorporation of “Canada” in the disputed domain name <jcrewcanada.com> did “nothing to minimize the risk of confusion”) and Lycos Europe N.V. v. RegionCo, WIPO Case No. D2000-1102 (finding that the “characteristic and distinctive component” of the disputed domain name <lycoseurope.com> was Complainant’s trademark LYCOS because “Europe” would be viewed by the public as a reference to the “geographical source or origin of the goods and service provided”).
Because the disputed domain name is composed of the ECCO trademark, a descriptive term for Complainant’s goods, and a geographic term, it is clear that Complainant’s ECCO trademark is the most distinctive element of the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which Complainant has rights. The requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Complainant has established rights in the ECCO trademark which precede the creation of the disputed domain name. Complainant’s rights are recognized in China, the jurisdiction cited as Respondent’s country of residence.
There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the terms “ecco” or “eccoshoesaustralia”. As such, Complainant has made out its prima facie case, which Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The record shows that Complainant has trademark rights in ECCO and provides footwear under this mark. The record also shows that Complainant’s trademark rights in ECCO precede the creation of the disputed domain name. It is clear that Respondent was aware of Complainant’s trademark rights when registering the disputed domain name given that the disputed domain name incorporates Complainant’s trademark in its entirety and the term “shoes” which describes the goods offered by Complainant under the ECCO trademark.
It is clear from the record that Respondent is aware of Complainant and has used the disputed domain name in bad faith. The webpages featured at the disputed domain name have featured goods identical to those offered by Complainant under Complainant’s ECCO trademark, and have also featured Complainant’s ECCO trademark and further suggestions of association with Complainant such as language stating that the website is “an Australia Ecco shoes Online Stores” [sic]. The use of Complainant’s trademark on the website and the use of the disputed domain name to sell goods identical to those provided by Complainant is indicative of an intent to deceive consumers into believing that the disputed domain name is somehow associated with, affiliated with, and/or endorsed by Complainant. There is no evidence in the record to refute this conclusion.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, this constitutes evidence of bad faith registration and use. It is likely that consumers accessing Respondent’s website will believe that the products featured are offered by Complainant or a party related to Complainant, most likely an Australian authorized retailer. Continued use of the disputed domain name in this manner could lead consumers to mistakenly believe that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant when they are actually not.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <eccoshoesaustralia.com> be transferred to Complainant.
Kimberley Chen Nobles
Dated: June 24, 2011