WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oakley, Inc v. Zhiyou Xu

Case No. D2012-1967

1. The Parties

Complainant is Oakley, Inc of Foothill Ranch, California, United States of America, represented by Sandidge IP, Inc., United States of America.

Respondent is Zhiyou Xu of Shang Rao, Jiang Xi, China.

2. The Domain Names and Registrar

The disputed domain names <oakleysunglasses-business.com>, <shoppingoakleysunglasses.com>, and <shoppingoakleysunglassess.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2012. On October 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 9, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 1, 2012.

The Center appointed Clive L. Elliott as the sole panelist in this matter on November 14, 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 Domain Name <oakleysunglasses-business.com> was registered with the Registrar on July 23, 2012. The Domain Name <shoppingoakleysunglasses.com> was registered with the Registrar on February 6, 2012. The Domain Name <shoppingoakleysunglassess.com> was registered with the Registrar on August 1, 2012.

5. Parties’ Contentions

A. Complainant

Complainant is a manufacturer, distributor and retailer of sports eyewear, apparel, footwear, accessories and other merchandise, all of which display its trademarks, such as OAKLEY and various Icon logos.

Complainant contends that since its formation in 1975, it has used and registered its marks in the United States and throughout the world and that as a result of its long-standing use, Complainant owns the common law trademark rights in its OAKLEY mark. Complainant submits that it has acquired these rights through continuous, extensive and exclusive use of the mark for over 35 years and that as a result customers in the United States and worldwide have come to associate its OAKLEY mark with its high quality products. Complainant asserts that as a result it has developed considerable goodwill in the OAKLEY mark.

In addition to Complainant’s common law rights, Complainant contends that it also owns numerous United States Trademark Registrations for its OAKLEY mark in connection with eyewear, apparel, footwear, headwear, accessories, and other merchandise. Complainant asserts that all of its 16 registrations were secured well before Respondent registered its Domain Names in 2012.

Complainant states that it also owns a number of domain name registrations which wholly incorporate its OAKLEY mark and that since their registration, Complainant has used, and continues to use, these Domain Names in connection with its various websites.

Complainant asserts that its 36 years of uninterrupted use of its OAKLEY trademark have resulted in millions of customers worldwide and billions of dollars in sales, and further asserts and that these numbers portray the commercial strength of its OAKLEY trademark.

Complainant further states that its Oakley products are sold exclusively through its own retail stores, outlet stores and websites including “www.oakley.com”, “www.oakley.co.uk”, “www.oakley.it” and through its Oakley authorized dealers.

Complainant asserts that the Domain Names are confusingly similar to its mark in that they incorporate Complainant’s OAKLEY trademark in its entirety. Complainant also asserts that the addition of the generic terms “sunglass,” “business” and “shopping”, as well as the addition of a generic top level domain such as “.com”, fails to distinguish the Domain Names from the Complainant’s mark.

Complainant submits that in all likelihood, Respondent was aware of Complainant’s domain names and websites associated with the same before it registered the Domain Names because Complainant’s sites were operational and easily accessible to Respondent at the time Respondent registered the Domain Names.

Complainant asserts that Respondent has no proprietary rights or legitimate interests in “shopping Oakley sunglasses” or “Oakley sunglasses business” or the Domain Names because Respondent is not using, or preparing to use, the Domain Names, or a name corresponding to the Domain Names, in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant further asserts that from a review of the Domain Name websites it reveals that they are prominently displaying Complainant’s OAKLEY trademark and Icon logo and are selling counterfeit sunglasses bearing the OAKLEY mark and Icon logos.

Complainant contends that Respondent has registered and is using the Domain Names in bad faith, as evidenced by Respondent diverting Complainant’s customers or potential customers seeking information about Complainant to the websites which Respondent’s Domain Names resolve.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant provides clear evidence that since its formation in 1975 it has used and registered its OAKLEY marks (including OAKLEY and various Icon logos, hereinafter referred to as the “OAKLEY Trademarks”) both in the United States and throughout the world. As a result of its long-standing use in relation to sports eyewear, apparel, footwear, accessories and other merchandise Complainant owns rights, through registration and at common law, in the OAKLEY Trademarks.

It is not difficult to conclude that the OAKLEY Trademarks are exclusively associated with Complainant. It is clear that by virtue of its widespread and long-standing use and the repute of the OAKLEY Trademarks that an unrelated entity or person using a similar domain name is likely to lead to members of the public being confused and deceived.

Complainant argues that the Domain Names are confusingly similar to its OAKLEY Trademarks in that they incorporate Complainant’s OAKLEY word mark in its entirety with the addition of the generic terms “sunglass,” “business” and “shopping”, and that this fails to distinguish the Domain Names from the OAKLEY Trademarks.

On this basis the Panel finds:

a) Complainant has rights in respect of the OAKLEY Trademarks.

b) The Domain Names are confusingly similar to the OAKLEY Trademarks.

Accordingly, the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

As noted above, Complainant contends that Respondent is selling counterfeit sunglasses bearing the OAKLEY mark and Icon logos on websites which resolve to the Domain Names. It is not difficult to infer, in the absence of any denial, that through these activities Respondent is using a deliberately similar version of Complainant’s OAKLEY Trademarks and Complainant’s significant goodwill and reputation to attract Internet traffic.

The Panel concludes that the Domain Names have been employed as a means of improperly diverting Internet customers. In those circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate and thus permissible.

On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.

The Panel is satisfied that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

Having reached the view that Respondent has intentionally attempted to attract for commercial gain Internet users to its websites thereby creating a likelihood of confusion with Complainant and/or the OAKLEY Trademarks, in the absence of any explanation from Respondent the Panel finds that it registered and used the Domain Names in bad faith. That is, so as to take bad faith advantage of Internet users who may wish to purchase Complainant’s genuine and well-known branded goods.

Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant’s OAKLEY Trademarks significantly pre-dated Respondent’s registration of the Domain Names and in light of the long-established use and widespread protection of the OAKLEY Trademarks that Respondent knew or ought to have known of Complainant’s prior rights.

Moreover, in this particular case, Complainant asserts that Respondent is using the OAKLEY Trademarks on websites to which the Domain Names resolve and selling counterfeit sunglasses bearing the OAKLEY mark and Icon logos on these websites. This conduct is likely to confuse and deceive consumers as to the true nature of the goods they are purchasing and the origin of those goods. Further, the overall impression must be that the Domain Names are necessarily connected in some way to Complainant and/or its OAKLEY Trademarks. Such use of the Domain Names stands in direct contravention of the exemplar of bad faith provided under paragraph 4(b)(iv) of the Policy.

The Panel thus has no difficulty in concluding that the third element of the Policy has been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <oakleysunglasses-business.com>, <shoppingoakleysunglasses.com>, and <shoppingoakleysunglassess.com> be transferred to Complainant.

Clive L. Elliott
Sole Panelist
Dated: November 28, 2012