About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oakley, Inc. v. Wagner Grilo

Case No. D2011-0780

1. The Parties

The Complainant is Oakley, Inc. of California, United States of America, represented by Clement & Ho, United States of America.

The Respondent is Wagner Grilo of Minas Gerais, Brazil.

2. The Domain Name and Registrar

The disputed domain name <oakleybrasilsurfshop.com> is 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, 2011. On May 5, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On May 6, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 25, 2011.

The Center verified that the Complaint together with the amended 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 May 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2011. The Respondent did not submit any formal response. However, the Center received an email communication in Portuguese from the Respondent on May 16, 2011.

The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on July 6, 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.

4. Factual Background

The Complainant is a company that manufactures and distributes high performance sunglasses, prescription lenses and frames, goggles, apparel, footwear, and accessories.

The Complainant owns various OAKLEY trademark registrations in over 100 countries (Annex 3 of the Complaint).

The Complainant also owns and has registered domain names that include or are associated with its OAKLEY mark and/or its other branded products. The Complainant's principal website is found at the domain name <oakley.com>.

The Complainant spends millions of dollars each year to advertise and promote OAKLEY branded products throughout the world through a variety of media, including television, radio, print advertisements, and the Internet.

The disputed domain name <oakleybrasilsurfshop.com> was registered on November 3, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name <oakleybrasilsurfshop.com> is identical or confusingly similar to its trademarks. The disputed domain name consists of the OAKLEY trademark followed by "brasilsurfshop."

The additional terms, which merely include the designation of a country – “Brasil” (Brazil) - plus the descriptive and non-distinctive generic reference to a surf shop does not eliminate the similarity with the Complainant’s trademark. The "surfshop" term serves only to reinforce the connection in the public mind between the trademark OAKLEY and the Complainant because a surf shop is associated with selling sunglasses, including the Complainant's products.

The Complainant further states that it has no relationship or association with the Respondent. The Respondent is not an authorized retailer of Oakley-branded products. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks. The Respondent is not commonly known by the disputed domain name, without infringing the exclusive trademark rights of the Complainant.

Finally, the Complainant states that the Respondent is not making any legitimate noncommercial or fair use of the domain name. Instead, the Respondent uses the disputed domain name for commercial gain by misleading consumers and tarnishing the OAKLEY trademark. The Respondent has fully incorporated the Complainant's OAKLEY mark into the <oakleybrasilsurfshop.com> domain name for the sole purpose of diverting Internet users from the Complainant's website or from other websites using the OAKLEY mark with the Complainant's permission, to the Respondent's website. Consequently it is very clear that the Respondent has no rights or legitimate interests in the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, the Respondent submitted an email communication on May 16, 2011 stating that “Wgnet has no responsibility over this domain name.”

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This first element requires that the Complainant demonstrates that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.

The Panel finds that the Complainant has established that it is the owner of the registered trademarks OAKLEY based on the evidence provided by the Complainant (Annex 3 and 4 of the Complaint).

The disputed domain name consists of three different words, one consisting of the Complainant’s registered trademark, the second of the name of a country (“Brasil”) and the third of a generic term “surfshop”. The issue often turns to the question of whether the addition of the generic terms would change the overall impression of the domain name as being connected to the Complainant or the trademark owned by the Complainant. The Panel considers that the addition of the country name merely provides the location of the place where you can obtain the goods. Finally, the addition of the generic terms, especially when added to a well-known trademark is not sufficient to avoid confusion. Especially when the generic word added to the trademark refers to a shop that sells sports items which clearly relate or can be confused with products of the Complainant.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant; however paragraph 4(c) of the Policy provides the Respondent with means on how to demonstrate its rights to and legitimate interests in the disputed domain name in responding to a complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under paragraph 4(a)(ii), the burden of production shifts to the Respondent.

The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name and has not registered it as a trademark, service mark or company name anywhere in the world. The Respondent is not commonly known by the name “Oakley”. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark OAKLEY. There is no relationship between the Complainant and the Respondent.

The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.

There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interest in the disputed domain name.

In the absence of a Response this Panel is satisfied that the Complainant has satisfied the second element of paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

This third element requires the Complainant to demonstrate that (1) the disputed domain name has been registered in bad faith and (2) is being used in bad faith.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

The disputed domain name is composed of three words, “Oakley”, “Brasil” and “Surfshop”. The first is a registered trademark owned by the Complainant; the second is a geographical indication, more precisely the name of a country and the third a generic term.

The Complainant has stated that Oakley Inc manufactures not only sunglasses but also other types of sport accessories such as surf shorts, rashguards and summer-beach footwear, among other sports gear. Consequently it is difficult to believe that the juxtaposition of these terms is a mere coincidence, taking into consideration that the Respondent’s website at the time of the filing of the Complaint was active and referred to Complainant’s products (Annex 2 of the Complaint), and provides links to other famous trademarks such as VICTORIA’S SECRET and TOMMY HILFIGER, which are the Complainant’s competitors. In addition it provided the possibility to buy competitors products. Therefore one can reasonably conclude that the Respondent had knowledge of the existence of the products manufactured by the Complainant, demonstrating bad faith registration.

The Panel considers that by registering a domain name corresponding to a well-known trademark, the Respondent has intentionally tried to divert Internet users to its webpage, for commercial gain. This behavior constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.

In this regard, the Panel concurs with what the panel’s observation in Oakley Inc. v. Li Susanto, WIPO Case No. D2010-0496 (involving the domain name <gudangoakley.com.com>).

The above can only lead the Panel to conclude that the Respondent is attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website.

Therefore, in accordance with paragraph 4 (b)(iv) of the Policy, the above findings lead to the conclusion that the disputed domain name was registered and is being used in bad faith.

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 name <oakleybrasilsurfshop.com> be transferred to the Complainant.

Rodrigo Velasco Santelices
Sole Panelist
Dated: July 15, 2011

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/