WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oakley, Inc. v. Sky Horizon, LLC / Peter Larousse
Case No. D2011-0909
1. The Parties
The Complainant is Oakley, Inc. of Foothill Ranch, California, United States of America, represented by Clement & Ho, United States of America.
The Respondent is Sky Horizon, LLC Peter Larousse of Toulouse, France.
2. The Domain Name and Registrar
The disputed domain name <oakleygolf.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on May 26, 2011. On May 26, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 26, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 June 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2011.
The Center appointed Ross Wilson 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 well-known sport and lifestyle brand. Since 1976 it has manufactured and distributed high performance sunglasses, prescription lenses and frames, goggles, apparel, footwear and accessories. The Complainant promotes its products heavily throughout the world through a variety of media, including television, radio, print advertisements and the Internet.
The Complainant’s OAKLEY trademark is registered in over 100 countries. The earliest trademark was registered was in August 27, 1985 in the United States of America.
The Respondent registered the disputed domain name in December 9, 2003.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark and that the addition of the descriptive word “golf” does not distinguish the disputed domain name from the Complainant’s mark. The word “golf” is a non-distinctive generic reference to a sport into which the Complainant sells many products. In the Complainant’s view the word “golf” serves only to reinforce the connection in the public mind between the trademark OAKLEY and the Complainant because Oakley produces products designed for and marketed to consumers, such as, golfing-specific sunglasses, golf shoes, golf shirts and golf bags.
The Complainant considers that the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant has no relationship or association with the Respondent, the Respondent is not an authorized retailer of Oakley-branded products and the Respondent did not register the disputed domain name with the consent or approval of the Complainant. Also, no legitimate interests can be found prior to the Respondent registering the disputed domain name because the Respondent had constructive notice of the Oakley trademark due to Oakley’s numerous trademark registrations and the mark’s famous status.
The Complainant contends that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name rather the Respondent has used the disputed domain name for commercial gain by misleading consumers and tarnishing the OAKLEY trademark. In fact, the disputed domain name is used in association with a “domain parking” web page. That web page displays advertisements that are calculated to be relevant to the Complainant’s mark so the Respondent can capitalise on traffic to the site through unauthorised use of the Complainant’s mark.
The Complainant states that an obvious assumed purpose of the Respondent for registering the disputed domain name was to sell it to anyone with a material offer and no commercially active use of the disputed domain name because the Respondent has no connection with the Complainant. Also, bad faith is evident because the Respondent has never made any commercial use of the disputed domain name beyond using it as a “domain parking” site in an intentional attempt to profit by diverting Oakley customers and generating misdirected advertising revenue. The Complainant considers such a practice is unduly unfair and a bad-faith attempt to take advantage of the Complainant’s trademark and its goodwill and reputation.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name 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 disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant provided evidence demonstrating that it has rights in the trademark OAKLEY since 1985.
The disputed domain name consists of the Complainant’s trademark, in its entirety, together with the term “golf”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The only difference between the Complainant’s trademark and the disputed domain name is the addition of the descriptive term “golf”, which cannot be considered distinctive. As found in Revlon Consumer Products Corporation v. Amar Fazil, WIPO Case No. D2011-0014 and Tag Heuer S.A. v. JBlumers Inc. Jerald Blume, WIPO Case No. D2004-0071, the addition of a laudatory or descriptive term does not serve to distinguish a disputed domain name but, serves to accentuate rather than to diminish the confusing similarity.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has not filed any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name. Consequently, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Panel finds that the Respondent is trying to benefit from the reputation of the Complainant’s widely-known trademark. The Respondent has chosen to use a domain name that contains the Complainant’s trademark in its entirety without authorisation by the Complainant. As a consequence, the disputed domain name resolves to a “domain parking” website providing links to other sites. According to the Complainant’s unrefuted allegations, the website provides links to websites that would generate revenue for the Respondent. No rights or legitimate interests derive from this type of use of another’s trademark. Previous panels have held that rights and legitimate interests cannot be created where the respondent would not choose such a domain name unless it was seeking to create an impression of association with the complainant (see Drexel University v. David Brouda, WIPO Case No. D2001-0067).
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. In addition, the Complainant has denied having any connection with the Respondent or providing any license or authorisation at all. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.
Despite the opportunity provided through this dispute process, the Respondent has chosen not to rebut the Complainant’s case or assert any rights in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith may be evidenced.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith.
The Respondent’s use of the disputed domain name represents deliberate disregard of the Complainant’s trademark rights. The Respondent must have known of the Complainant’s well-known trademark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain name. As expressed in Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641, where the selection of domain names is so obviously connected to the complainant’s trademark their very use by someone with no connection with the company suggests opportunistic bad faith. Similarly, in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, where the respondent registered a number of domain names incorporating a well-known trademark in its entirety, the panel stated, “that it is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant”.
Noting that the Respondent has not rebutted any of the Complainant’s claims, the Panel considers that there is a strong probability that the Respondent’s awareness of the Complainant’s business was the motivation for registering and using the disputed domain name. Also, the Panel considers the Respondent’s choice of the domain name was not merely coincidental but was a deliberate action to gain a commercial advantage. As stated in Oakley, Inc. v. Joel Wong/Blue Host.com- INC., WIPO Case No. D2010-0100 “It is inconceivable that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”.
On the basis of the above, the apparent false contact details registered by the Respondent with eNom and the fact that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(i) and 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used in bad faith.
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 <oakleygolf.com> be transferred to the Complainant.
Dated: July 20, 2011