WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oakley, Inc. v. Victoriaclassic.Inc

Case No. D2012-1968

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 Victoriaclassic.Inc of Annapolis, Maryland, United States of America.

2. The Domain Name and Registrar

The disputed domain names <oakleyglassescool.com>, <oakleyglasshut.com>, <oakleyreplicaglass.com>, <oakleysbuy.com>, <oakleysunglassbuy.com>, <replicaoakleybuys.com>, and <replicaoakleysbuy.com> 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 disputed 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. In response to a request by the Center, Complainant filed an amended Complaint to address typographical errors on October 12, 2012.

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 Respondent of the Complaint, and the proceedings commenced on October 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 5, 2012.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 16, 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

Complainant is the owner of registrations for the word and word and design trademark OAKLEY on the Principal Register of the United States Patent and Trademark Office (“USPTO”), including (but not limited to) registration number 1,519,823, dated January 10, 1989, in international class (IC) 18, covering athletic bags; registration number 1,521,599, dated January 24, 1989, in IC 9, covering sunglasses and accessories for sunglasses (as further specified); registration number 1,522,692, dated January 31, 1989, in IC 25, covering clothing (as further specified); registration number 1,552,553, dated August 22, 1989, in ICs 9 and 12, covering goggles and handgrips for bicycles and motorcycles, and; registration number 3,153,946, dated October 10, 2006, in IC 9, covering prescription eyewear, including eyewear containing electronics devices (as further specified).

Complainant manufacturers, distributes and sells eyewear, apparel, footwear, accessories and other merchandise displaying the OAKLEY trademark. Complainant has used the OAKLEY trademark in commerce in the United States since as early as 1975, and advertises and sells its products in many countries. Complainant has sold products valued at billions of dollars, and has spent millions of dollars in advertising its products under the OAKLEY trademark in various media. Complainant maintains and operates a commercial Internet website, inter alia, at “www.oakley.com”. Complainant sells its products exclusively through its own retail stores, its Internet websites, and through a network of authorized dealers.

According to the Registrar’s verification, Respondent is registrant of each of the disputed domain names. According to WhoIs printouts provided by the Center, the records of registration of the disputed domain names were created as follows: (1) <oakleyglassescool.com> on December 24, 2011; (2) <oakleyglasshut.com> on August 26, 2012; (3) <oakleyreplicaglass.com> on December 24, 2011; (4) <oakleysunglassbuy.com> on December 24, 2011; (5) <replicaoakleybuys.com> on June 27, 2012; (6) <replicaoakleysbuy.com> on December 24, 2011, and; (7) <oakleysbuy.com> on December 24, 2011.

Respondent has used the disputed domain names to direct Internet users to websites where various models of sunglasses are sold under Complainant’s OAKLEY trademark at very low prices in comparison to the prices for which similar products are offered by Complainant at its own website, or on websites of its authorized dealers. While products on Respondent’s websites are offered at prices of USD 12 - USD 16, similar products are offered on Complainant’s website at prices of USD 120 - USD 325. While a few of the websites maintained by Respondent use the term “replica” somewhere on a webpage, most do not use that term. Even where the term “replica” is used, it is not used prominently or explained. Respondent’s websites identified by the disputed domain names generally convey the impression of offering Complainant’s trademark products at prices very substantially below those at which such products are offered for sale by Complainant and its authorized dealers. Among the website printouts of Respondent’s website materials provided by Complainant, there does not appear any disclaimer of association with Complainant and its trademark products.¹

The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges rights in the OAKLEY trademark in the United States based on long use in commerce and as evidenced by numerous registrations at the USPTO. Complainant argues that its trademark is well-known.

Complainant contends that the disputed domain names are each confusingly similar to its trademark because such disputed domain names incorporate Complainant’s trademark in its entirety and add generic terms that do not sufficiently distinguish the disputed domain names from Complainant’s trademark.

Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Complainant’s use of its trademark long predates Respondent’s registration of the disputed domain names, and Respondent was or should have been aware of Complainant’s trademark when it registered the disputed domain names; (2) Respondent’s registration of a famous mark is not supported by legitimate interests; (3) Respondent has not made a bona fide offering of goods or services because Respondent is offering “counterfeit sunglasses” bearing the OAKLEY trademark and logos, and because Respondent has not been authorized or licensed to manufacture, sell or offer for sale Complainant’s products; (4) selling counterfeit products displaying Complainant’s trademarks does not constitute a bona fide sale of goods; (5) there is no evidence to suggest that Respondent has been commonly known by the disputed domain names or Complainant’s OAKLEY trademark.

Complainant contends that Respondent registered and is using the disputed domain names in bad faith because: (1) Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the websites to which Respondent’s domain names resolve, where Respondent presumably obtains commercial benefits from the sale of counterfeit products; (2) based on the well-known character of Complainant’s trademark, Respondent had knowledge of Complainant’s trademark when it registered the disputed domain names.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its records of registration. Respondent did not reply to e-mail notification. The express courier delivery service engaged by the Center reported that the address provided by Respondent in its record of registration was not accurate, and that the telephone number provided by Respondent was also inaccurate. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

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

(ii) 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.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of ownership of rights in the OAKLEY trademark in the United States based on use in commerce and registration at the USPTO. Respondent has not challenged Complainant’s showing. The Panel determines that Complainant has rights in the OAKLEY trademark in the United States.

The disputed domain names each incorporate Complainant’s OAKLEY trademark, and each add a term or terms that either are commonly descriptive of the type of product that Complainant sells under its trademark (i.e., “glass”, “glasses”, “sunglass”) or are commonly descriptive of an act (i.e., “buy”, “buys”) and / or associated with location (i.e., “hut”) for purchasing products. Some of the disputed domain names incorporate the descriptive term “replica” that refers to a copy of an original product (though the term “replica” does not necessarily refer to a “counterfeit” trademark product). One of the disputed domain names includes the common adjective “cool” that is used to denote fashionable style. Because of the distinctive character of Complainant’s trademark, the addition of terms referring to acts associated with purchasing, and locations for purchasing, as well as common reference to copied goods, does not distinguish the disputed domain names from Complainant’s trademark for purposes of Internet consumer association with Complainant and its products. It is apparent from the content of Respondent’s websites that it incorporated Complainant’s trademark in the disputed domain names to associate itself with Complainant and its products. The Panel determines that the disputed domain names are each confusingly similar with Complainant’s OAKLEY trademark within the meaning of the Policy.

The Panel determines that Complainant has rights in the OAKLEY trademark and that each of the disputed domain names is confusingly similar to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))

Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Complainant’s use of its trademark long predates Respondent’s registration of the disputed domain names, and Respondent was or should have been aware of Complainant’s trademark when it registered the disputed domain names; (2) Respondent’s registration of Complainant’s famous mark is not supported by legitimate interests; (3) Respondent has not made a bona fide offering of goods or services because Respondent is offering “counterfeit sunglasses” bearing the OAKLEY trademark and logos, and because Respondent has not been authorized or licensed to manufacture, sell or offer for sale Complainant’s products; (4) selling counterfeit products displaying Complainant’s trademark does not constitute a bona fide sale of goods; (5) there is no evidence to suggest that Respondent has been commonly known by the disputed domain names or Complainant’s OAKLEY trademark. Complainant has made a prima facie demonstration that Respondent lacks rights or legitimate interests in the disputed domain names.

Respondent has not attempted to rebut the prima facie demonstration by Complainant that Respondent lacks rights or legitimate interests in the disputed domain names. There is nothing in the record of this proceeding that suggests to the Panel that Respondent has rights or legitimate interests in the disputed domain names. Complainant has alleged that Respondent is offering and selling “counterfeit” OAKLEY products on its websites. By “counterfeit” Complainant presumably means products that are identified by Complainant’s trademark and that have an identical or substantially similar appearance to Complainant’s products, but that have not been manufactured and/or distributed by or under the authority of Complainant. Complainant has not presented direct evidence that the products offered and sold by Respondent are manufactured and/or distributed by a person(s) other than Complainant (or under its authority). However, Complainant has provided strong circumstantial evidence in the differential between the prices charged by Complainant (and its authorized distributors) for products on their websites comparable in appearance to those offered by Respondent on its websites. Although “original” products may be sharply discounted by vendors of discontinued or “second quality” products, or under some other circumstances, in circumstances such as those present here it would be incumbent upon Respondent to rebut the strong circumstantial evidence presented by Complainant that Respondent is offering and selling counterfeit trademark products. In this regard, the offering and sale by Respondent of presumptively counterfeit trademark products does not establish rights or legitimate interests in the disputed domain names.

The Panel determines that Complainant has demonstrated that Respondent lacks rights or legitimate interests in each of the disputed domain names.

C. Registered and Used in Bad Faith

In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Among those circumstances are: (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”

The Panel finds Respondent has registered the disputed domain names incorporating Complainant’s distinctive trademark and used the disputed domain names to direct Internet users for commercial gain to websites where it offers and sells products that have not been made under authority of Complainant or authorized for sale under Complainant’s trademark (i.e. Complainant has established by strong circumstantial evidence, unrebutted by Respondent, that Respondent is offering “counterfeit” trademark products on its websites). Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with Complainant’s mark as to Complainant as a source, sponsor, affiliate or endorser of Respondent’s websites. Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel determines that Respondent registered and is using each of the disputed domain names 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 following disputed domain names be transferred to Complainant:

<oakleyglassescool.com> <oakleyglasshut.com> <oakleyreplicaglass.com> <oakleysbuy.com> <oakleysunglassbuy.com> <replicaoakleybuys.com> <replicaoakleysbuy.com>

Frederick M. Abbott
Sole Panelist
Date: November 25, 2012

¹ As of the date of this decision, the disputed domain names do not link to active websites (Panel visit of November 25, 2012).