WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vans, Inc. v. guruoyu, chen fali

Case No. D2012-0957

1. The Parties

The Complainant is Vans, Inc., of Santa Fe Springs, California, United States of America, represented by Winston & Strawn LLP, United States of America.

The Respondents are guruoyu of Changshu, Jiangsu, China; and chen fali of Lijiang, Yunnan, China.

2. The Domain Names and Registrars

The disputed domain names <australiavans.com>, <australiavans.net>, <vans-australian.com>, <vans-australian.net>, <vansshoesaustralian.com>, <vansuk2012.com> are registered with Jiangsu Bangning Science & technology Co. Ltd. The disputed domain name <vansaustralian.net> is registered with Bizcn.com, Inc. The disputed domain names <vanshoesaustralia.com> and,<vanshoescanada.com> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2012. On May 7, 2012, the Center transmitted by email to Jiangsu Bangning Science & technology Co. Ltd., Bizcn.com, Inc. and Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain names. On May 8, 2012, Bizcn.com, Inc. and Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 9, 2012, Jiangsu Bangning Science & technology Co. Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 9, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of the 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 Respondents of the Complaint, and the proceedings commenced on May 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondents' default on June 6, 2012.

The Center appointed Jonathan Agmon as the sole panelist in this matter on June 13, 2012. 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 division of VF Corporation and engages in the field of action sports lifestyle since the year 1960. The Complainant operates more than 160 retail stores in the United States and in Europe. The Complainant designs, markets and distributes footwear, clothing and accessories that are related to action sports, under the mark VANS.

The Complainant, itself and through its subsidiaries, is the owner of numerous worldwide trademark registrations for the mark VANS. For example: Australian trademark registration No. 389592 – VANS (logo), with the registration date of April 6, 1923; United States trademark registration No. 1267262 – VANS, with the registration date of February 14, 1984; United Kingdom of Great Britain and Northern Ireland trademark registration No. 2200282 – VANS, with the registration date of January 7, 2000; Canadian trademark registration No. TMA617357 – VANS, with the registration date of August 24, 2004; Chinese trademark registration No. 1276089 – VANS (logo), with the registration date of May 21, 1999, and many more.

The Complainant also markets its products through a website under the domain name <vans.com>.

The disputed domain names <australiavans.net> and <australiavans.com> were registered with the registrar Jiangsu Bangning Science & Technology Co. Ltd. on September 9, 2011.

The disputed domain name <vans-australian.net> was registered with the registrar Jiangsu Bangning Science & Technology Co. Ltd. on December 12, 2011.

The disputed domain names <vans-australian.com> and <vansshoesaustralian.com> were registered with the registrar Jiangsu Bangning Science & Technology Co. Ltd. on December 18, 2011.

The disputed domain name <vansuk2012.com> was registered with the registrar Jiangsu Bangning Science & Technology Co. Ltd. on November 16, 2011.

The disputed domain name <vansaustralian.net> was registered with the registrar Bizcn.com, Inc. on October 23, 2011.

The disputed domain names <vanshoesaustralia.com> and <vanshoescanada.com> were registered with the registrar Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com on January 7, 2012.

The disputed domain names <vans-australian.com>, <australiavans.com>, <vans-australian.net>, <vansaustralian.net> and <vansshoesaustralian.com> resolve to online commercial websites that bear the Complainant’s trademark and offer for sale products that appear to be of the Complainant's.

The disputed domain name <vansuk2012.com> resolves to an index page containing hyperlinks to online marketplaces websites, offering for sale products of known brands, among others, of the Complainant's.

The disputed domain names <australiavans.net>, <vanshoesaustralia.com> and <vanshoescanada.com> resolve to inactive webpages.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the VANS mark has become a well-known mark due to the Complainant's extensive use and registration of the VANS marks around the world.

The Complainant further argues that the disputed domain names are confusingly similar to the Complainant's VANS mark because they fully incorporate the VANS mark. The Complainant further contends that the addition of geographic terms or other generic terms and gTLD's to the disputed domain names does not prevent the confusing similarity.

The Complainant further argues that the Respondents are not known by the VANS mark or by any variation of it.

The Complainant further argues that the Respondents’ use of the disputed domain names, to offer for sale products that compete with the Complainant or are counterfeit product of the Complainant, cannot be considered a bona fide or legitimate business.

The Complainant further argues it has not authorized, licensed or granted the Respondents to use the VANS mark or any variation thereof.

The Complainant further argues that the Respondents registered the disputed domain names with actual knowledge or constructive knowledge of the Complainant's rights in the VANS mark due to the Complainant's Chinese and United States trademark registrations for the VANS mark.

The Complainant further argues that the disputed domain names resolve to websites that offer for sale products bearing the Complainant's mark that compete with the Complainant’s products. The Complainant contends that such use demonstrates the Respondents' bad faith.

The Complainant further argues that it already confronted the Respondents in a previous UDRP proceeding, where the panel ordered the transfer of the relevant domain name. The Complainant further contends that the Respondents are serial cyber squatters.

For all of the above reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondents

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

6. Discussion and Findings

A. Preliminary Issue – Consolidation of Multiple Domain Names and Respondents

This case raises the question whether the Complainant may bring the Complaint against multiple Respondents, who are the registrants of different disputed domain names, where the connection between the Respondents is not conclusive on its face. Previous UDRP panels have addressed this issue and found that there are situations when multiple domain name registrants can be considered as one for the purposes of a UDRP proceeding.

The general rule was asserted in Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, WIPO Case No. D2009-1345 stating that “A number of panels deciding cases under the Policy have permitted a single complaint in respect of multiple domain names for which the registrants were not the same person, where the circumstances suggested that the registrants (being the named respondents) were controlled by a single entity”. (See also Asset Marketing Systems, LLC v. SmartBuy Corporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al., WIPO Case No. D2004-0492; Dr. Ing. h.c.F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890).

The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 broadened the above approach and concluded that "the consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve”.

Common control has been given a broad interpretation. UDRP panels found that common control has been exercised in various circumstances, including, where the content of the websites were substantially identical and referred Internet visitors to a common “homepage” (see CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071), and in circumstances where the domain names were registered with same registrar and resolved to essentially identical websites (see Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659).

The Complainant provided the following evidence and argument to indicate a connection between the Respondents:

a) The registration details for all the disputed domain names share the same email address;

b) The registration details for the disputed domain names share the same phone number and fax number;

c) The disputed domain names <vans-australian.com>, <australiavans.com>, <vans-australian.net>, <vansaustralian.net> and <vansshoesaustralian.com> while registered by different entities, resolve to online commercial websites bearing the Complainant’s trademark and offer for sale the same products bearing the Complainant's trademark;

d) The disputed domain names combine the term “vans” with an additional element, which indicates a geographic location where the Complainant conducts its business and other generic terms that are associated with footwear.

The Panel deems that above facts are sufficient for a finding of common control or connection between the disputed domain names.

As a result, the Panel finds that under the circumstances of this case, the Complainant established that the disputed domain names are subject to the common ownership or control of the same person or company. The connection is sufficient to permit the filing of a single Complaint against the multiple Respondents holding the disputed domain names.

B. Preliminary Issue – Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreements for the disputed domain names <australiavans.com>, <australiavans.net>, <vans-australian.com>, <vans-australian.net>, <vansshoesaustralian.com>, <vansaustralian.net> and <vansuk2012.com> is Chinese.

The language of the Registration Agreements for the disputed domain names <vanshoescanada.com> and <vanshoesaustralia.com> is English.

The Complainant requested that the language of the proceeding should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

Upon deciding on the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain names <vansshoesaustralian.com>, <vanshoesaustralia.com> and <vanshoescanada.com> incorporate English words such as "shoes";

b) The disputed domain names <vans-australian.com>, <australiavans.com>, <vans-australian.net>, <vansaustralian.net> and <vansshoesaustralian.com> resolve to an online marketplaces, using the English language;

c) It is presumed that the disputed domain names are oriented to English speaking consumers, as they allow payments in USD;

d) The language of the registration agreements for the disputed domain names <vanshoescanada.com> and <vanshoesaustralia.com> is English;

e) The Respondents did not object to the Complainant's request that English be the language of proceedings.

Upon considering the above, the Panel decides to allow the Complainant's request and rules that English be the language of proceedings.

C. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant is the owner of numerous worldwide trademark registrations for the mark VANS. For example: Australian trademark registration No. 389592 – VANS (logo), with the registration date of April 6, 1923; United States trademark registration No. 1267262 – VANS, with the registration date of February 14, 1984; United Kingdom trademark registration No. 2200282 – VANS, with the registration date of January 7, 2000; Canadian trademark registration No. TMA617357 – VANS, with the registration date of August 24, 2004; Chinese trademark registration No. 1276089 – VANS (logo), with the registration date of May 21, 1999, and many more.

Each of the disputed domain names integrates the Complainant’s VANS trademark in its entirety. The disputed domain names differ from the Complainant’s trademark by the additional geographic indicators, such as “Australia”, “Australian”, “Canada”, generic terms, such as “shoes” and “2012” and the gTLDs “.com” and “.net”.

As stated above, the disputed domain names integrate the Complainant’s VANS trademark in its entirety, as a dominant element. The additional geographic indicators and generic terms do not serve to sufficiently distinguish or differentiate the disputed domain names from the Complainant’s VANS trademark, as they are descriptive elements that relate to the Complainant’s field of business or the Complainant’s place of business.

The mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark for the purposes of the Policy: “[t]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

The addition of the gTLD “.com” and “.net” to the disputed domain names does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” and “.net” are without legal significance since the use of a gTLD is technically required to operate a domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.

D. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”, Paragraph 2.1).

In the present case, the Complainant has demonstrated to the Panel that the Respondents lack rights or legitimate Interests in respect of the disputed domain names and the Respondents failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondents to use the VANS trademark, or a variation thereof.

The Respondents did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain names.

E. Registered and Used in Bad Faith

The Complainant must show that the Respondents registered and are using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant maintained that the Respondents registered the disputed domain names well after the time that the Complainant’s VANS trademark was registered. According to evidence provided by the Complainant, the Complainant’s trademark has been registered and in affect at least since the year 1983. It is suggestive of the Respondents’ bad faith in these particular circumstances that the trademark, owned by the Complainant was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the respondent, if by using the domain name it has intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the domain name resolves to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location to which the domain name resolves to.

The disputed domain names <vans-australian.com>, <australiavans.com>, <vans-australian.net>, <vansaustralian.net> and <vansshoesaustralian.com> resolve to websites that advertise and market footwear products bearing the mark VANS. Also, the disputed domain name <vansuk2012.com> resolves to an index page containing hyperlinks to websites offering for sale products of known brands, among others, of the Complainant’s.

The Respondents’ use of the VANS mark to promote the sale of similar or identical goods to the goods being offered by the Complainant constitutes evidence that the Respondents registered and used these disputed domain names with knowledge of the Complainant and the Complainant’s trademark and reputation, and subsequently intended to trade off the value of these. The Respondents’ actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765: “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.

The disputed domain names <australiavans.net>, <vanshoesaustralia.com> and <vanshoescanada.com> resolve to inactive webpage. No evidence was presented to the Panel that proves that the Respondents have ever used these disputed domain names.

It was held in UDRP decisions that passive holding of domain names can, under certain circumstances, be considered bad faith use of the domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393).

In the present case, taking into consideration the goodwill the Complainant achieved in its trademark, the fact that the Complainant’s trademark is neither a common noun, nor a common name, and the fact that the disputed domain names incorporate the Complainant’s trademark as a whole, it is determined by the Panel that the passive holding by the Respondents is considered to be in bad faith.

Furthermore, the disputed domain names are confusingly similar to the Complainant's trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

In light of the Complainant’s distinctive registered trademark and the Respondents’ use of the disputed domain names, the Panel finds that the disputed domain names, which are confusingly similar to the Complainant’s mark, create likelihood that Internet users would be confused and identify the Respondents as either associated or affiliated with the Complainant.

The Complainant provided a previous domain arbitration decision involving the Complainant and the Respondent guruoyu. Although such pattern of conduct can be considered as “cybersquatting”, in light of the above, it is unnecessary to decide whether the evidence on this point would warrant a finding of bad faith.

Based on the evidence presented to the Panel, including the registration of the disputed domain names significantly after the registration of the Complainant’s marks, the similarity between the disputed domain names and the Complainant’s trademark and the Respondents’ use of the disputed domain names to sell goods that are regularly sold by the Complainant, the Panel draws the inference that the disputed domain names were registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 <australiavans.com>, <australiavans.net>, <vans-australian.com>, <vans-australian.net>, <vansshoesaustralian.com>, <vansuk2012.com>, <vansaustralian.net>, <vanshoesaustralia.com>, <vanshoescanada.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: June 27, 2012