WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ecco Sko A/S v. PrivacyProtect.org / Li Jing, Wang Jianguo, and Yang Yan
Case No. D2013-0016
1. The Parties
The Complainant is Ecco Sko A/S of Bredebro, Denmark, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC of United States of America (“U.S.”).
The Respondents are PrivacyProtect.org of Queensland Australia / Li Jing of Langaoxian, Shanxi, China, Wang Jianguo of Kunmingshi, Yunnan, France, and Yang Yan of Beijing, China.
2. The Domain Names and Registrar
The disputed domain names <eccoschuhedeutschland.com>, <eccoshoesonlinestore.com>, <eccoshoesshopusa.com>, and <topeccoshoes.com> are registered with Cloud Group Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2013. On January 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 7, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names in addition to the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2013, providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to either submit an amendment to the Complaint to demonstrate that the named Respondents were, in fact, the same entity or file a separate Complaint or Complaints for the domain names associated with different Registrar-disclosed registrants. On January 10, 2013, the Complainant filed an amendment to the Complaint which included, in addition to the original Respondent, the three underlying registrants identified by the Registrar.
The Center verified that the Complaint together with the amendment to 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 January 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondents’ default on February 5, 2013.
The Center appointed Steven A. Maier as the sole panelist in this matter on February 11, 2013. 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 corporation based in Denmark which has produced causal footwear since 1963. It has traded under the name “Ecco” since 1969. It is the owner of numerous registered trademarks for footwear and related products which comprise or contain the term, “Ecco” including Community, International and U.S. trademarks. The registrations include both word and figurative marks, the latter comprising the term “Ecco” in a stylized manner.
The Respondent Wang Jiangou registered the disputed domain name <eccoschuhedeutschland.com> in the name of the Respondent PrivacyProtect.org on September 27, 2012.
The Respondent Li Jing registered the disputed domain names <eccoshoesonlinestore.com> and <topeccoshoes.com> in the name of the Respondent PrivacyProtect.org on May 11, 2012.
The Respondent Yang Yan registered the disputed domain name <eccoshoesshopusa.com> in the name of the Respondent PrivacyProtect.org on October 23, 2012.
All four of the disputed domain names had been used for the purpose of websites offering footwear under the name and stylized mark ECCO. At the time of the Center’s formal notification of the Complaint, all the websites were deactivated.
5. Propriety of a Single Complaint
This Complaint relates to four disputed domain names. Under paragraph 3(c) of the Rules “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” In the Complaint the Complainant identified the holder of all four of the disputed domain names as follows:
PrivacyProtect.org
Domain Admin (contact@privacyprotect.org)
ID#10760, PO Box 16
Note - All Postal Mails Rejected, visit Privacyprotect.org
Nobby Beach
null, QLD 4218
AU
Tel. +45.36946676
These details were obtained from WhoIs searches annexed by the Complainant to the Complaint and were identical in each case.
Upon the Center seeking registrar verification, however, the Registrar Cloud Group Limited confirmed it was the Registrar of all four disputed domain names and stated: “Privacy Protection was previously enabled and contact details were hidded [sic]. I have now disabled that for all 4 domains.” The Registrar then went on to provide the following “full contact details” in respect of each of the four disputed domain names:
<eccoschuhedeutschland.com>
wang jianguo
hhjkrk@163.com
N/A
yunnanshengkunmingshiwuhuaqujiaochangbeilu67hao
kunmingshi
yunnan
France 650021
+33.08715166722
<eccoshoesonlinestore.com>
li jing
kjhufjh@sina.com
li jing
langaoxianzuolongzhenqiaoxijiesizu
langaoxian
shanxi
China 725403
+86.09152961238
<eccoshoesshopusa.com>
yang yan
hujiou@163.com
N/A
BeiJingShiFuChengLu421Hao
Beijing
Beijing
China 100037
+86.01068905486
<topeccoshoes.com>
li jing
kjhufjh@sina.com
li jing
langaoxianzuolongzhenqiaoxijiesizu
langaoxian
shanxi
China 725403
+86.09152961238
In response to this information, the Center offered the Complainant the options of either filing a separate Complaint for each of the above Respondents or providing an amendment to explain why the named Respondents were in fact the same entity.
By way of response, the Complainant filed an amendment to the Complaint naming each of the above Respondents in addition to the original Respondent, PrivacyProtect.org. However, the Complainant submits that it was entitled to rely on the original Complaint in respect of all four disputed domain names because, at the date of the original Complaint, the Respondent was shown to be the same in each case, i.e. PrivacyProtect.org. The Complainant relies on the paragraph 4.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Panel Overview 2.0”) which indicates that, while some panels will take the underlying registrant to be the respondent, others have been content to treat the original registrant, i.e. the proxy or privacy service, as the proper respondent. The Complainant relies in particular on Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324 where it was stated that “a registrant that chooses to register through a privacy service and the registrar that provides such registration must bear some of the consequences of anonymous registration.”
In addition, the Complainant contends that there is evidence that the named Respondents are, in fact, the same entity. The Complainant points to the fact that all were registered with the same Registrar and use the same name servers; that all four disputed domain names were registered within a relatively narrow time window (between May 2012 and October 2012); and that all four disputed domain names have been used for the purpose of very similar websites, i.e. websites offering counterfeit merchandise under the Complainant’s trademark (see Section 6 A.). In the circumstances the Complainant contends that the four disputed domain names given for the three underlying registrants are likely to be aliases for the same entity.
Under the “Definitions” set out in paragraph 1 of the Rules, the Respondent is defined as “the holder of a domain-name registration against which a complaint is initiated.” As to the meaning of “initiated”, paragraph 3(a) of the Rules states that: “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN”. At the date the Complaint was submitted, the holder of the disputed domain names appeared from the WhoIs record in each case to be the Respondent PrivacyProtect.org and it was therefore entirely proper for the Complainant to commence the proceedings by way of a single Complaint in respect of all four of the disputed domain names.
However, subsequent to the filing of the Complaint the Registrar disclosed to the Center the identity of the underlying registrants in the case of each of the four disputed domain names. In cases where only one domain name is involved, it may not make a great deal of difference whether the named respondent is the proxy/privacy service or the underlying registrant, but the point is of greater significance when numerous domain names are involved in view of the need to comply with paragraph 3(c) of the Rules. While the WhoIs registrant may be regarded as the “holder” of a domain name registration absent any further or better information, the WhoIs registration is not conclusive as to the identity of the “holder” and the Panel does not believe it would be proper to ignore any such information that may subsequently come to light in the context of an assessment for the purposes of paragraph 3(c). If, for example, it emerged that the underlying registrants were plainly different and unconnected parties, the Panel does not believe it would necessarily be appropriate to consider the relevant domain names together in a single Complaint.
In this case, however, the Complainant has submitted the amendment to its Complaint and has put forward reasons why it believes the three underlying registrants are likely to be the same entity. In addition to those reasons, the Panel notes that the underlying registrants in the case of both of the disputed domain names <eccoshoesonlinestore.com> and <topeccoshoes.com> is stated by the Registrar to be the same and that these two disputed domain names were registered on the same day. The Panel also notes that, in the case of all four of the disputed domain names, it appears that the postal copies of the Notification of Complaint could not be delivered because the address given was incorrect, incomplete or non-existent. While these matters are not conclusive that the holder of all four of the disputed domain names is the same entity, the Panel accepts that there is a prima facie basis to that effect which is not contradicted by anything stated by any of the Respondents or any other available evidence. Further, in the view of the Panel there can be no conceivable prejudice to any of the Respondents from considering all of the disputed domain names together in a single Complaint, and the Panel also recognises the substantial cost and inconvenience that would result to the Complainant if it were required to file a separate Complaint in respect of each disputed domain name.
Accordingly, the Panel finds that the requirements of paragraph 3(c) are satisfied and that the Complaint may properly relate to all four of the disputed domain names in a single Complaint.
6. Parties’ Contentions
A. Complainant
The Complainant submits that each of the four disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights under the paragraph 4(a)(i) of the Policy.
The Complainant relies on its trademark registrations for the name and stylized mark ECCO and exhibits evidence of those registrations. These include, for example, Community Trade Mark (CTM) number 179317 for the word mark ECCO registered on May 3, 2000 for footwear in Class 25 and U.S. trademark number 1,753,970 for the figurative mark ECCO registered on February 23, 1993 for causal walking shoes in Class 25.
The Complainant also relies on the public recognition of its ECCO mark. It states that it has over 20,000 employees in 50 countries and that its branded products are sold at more than 4,000 branded locations in over 90 countries. Its revenue in 2011 was EUR 951 million.
The Complainant submits that, in the case of each of the disputed domain names, the generic Top-Level Domain (gTLD) suffix “.com” should be disregarded and the remainder of the name comprises the Complainant’s mark ECCO together with generic, descriptive or geographical terms. These terms include “schuhe” (the German for “shoes”) and “Deutschland”, “shoes”, “online”, “store”, “USA”, “shop” and “top”, none of which is “sufficient to escape the finding of similarity and does not change the overall impression of the designation […] as being connected to the Complainant” (Wikimedia-Foundation Inc. v. commens, Nan Jiang, WIPO Case No. D2009-1699). Further, the use of certain of these terms which are associated with the Complainant’s own renowned activities actually increase the confusing similarity (e.g. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561).
The Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain names under the paragraph 4(a)(ii) of the Policy.
The Complainant states that it has never licensed or permitted the Respondents to use its trademark ECCO, nor are the Respondents commonly known by that name, nor is there evidence of any commercial relationship between the parties that might entitle the Respondents to use the name.
Furthermore, the Respondents have never used, or made preparations to use, any of the disputed domain names in connection with any bona fide offering of goods and services. On the contrary, it is the Complainant’s submission that each of the disputed domain names has been used for the purpose of websites using the Complainant’s name and stylized mark ECCO for the sale of counterfeit merchandise. The Complainant exhibits screenshots of each of the websites in question. As evidence that the goods are counterfeit the Complainant relies on the Respondents’ use of imagery used in former marketing campaigns; images of hangtags not used by the Complainant and typically seen on counterfeit merchandise; footwear styles and boxes labelled with the ECCO trademark that are not, in fact, associated with the Complainant but instead frequently seen on websites selling fake footwear; images of footwear boxes containing the ECCO trademark along with a Danish Royal Warrant logo that is never used by the Complainant on such boxes; and ECCO logos not used by the Complainant.
The Complainant states that while the website linked to the disputed domain name <eccoshoesonlinestore.com> was discontinued as a result of enforcement action taken by the Complainant, the websites linked to the remaining three disputed domain names were continuing as at the date of the original Complaint.
The Complainant also contends that the Respondents are not making “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” under the paragraph 4(c)(iii) of the Policy. On the contrary, the Respondents are obviously setting out to mislead consumers for commercial gain.
The Complainant submits that that disputed domain names were registered and are being used in bad faith under the paragraph 4(a)(iii) of the Policy.
The Complainant repeats its contentions concerning the Respondents’ use of the disputed domain names for the purpose of websites selling counterfeit goods under the Complainant’s name and stylized mark. The Complainant asserts that the Respondents must have been aware of the Complainant’s trademarks prior to their registration of the disputed domain names.
The Complainant relies on Six Continents Hotels, Inc. v. Telmex Management Services, WIPO Case No. D2001-0996 in which the panel stated that: “The deliberate adoption of Complainant’s well-known trade marks without any apparent right or interest therein, raises a prima facie presumption of bad faith registration, and Complainant’s demonstrated use of the domain names to link to other [similar] service sites […] demonstrates bad faith use.”
The Complainant relies on each of the four grounds under paragraph 4(b) of the Policy which may be indicative of the registration and use of a domain name in bad faith.
In particular, the Complainant submits that the Respondents have registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and have engaged in a pattern of such conduct under the paragraph 4(b)(ii) of the Policy. The Complainant repeats in this regard that the same Respondent should be taken to have registered all four of the disputed domain names.
The Complainant also asserts that, by using the disputed domain names for the sale of counterfeit goods under the Complainant’s mark, the Respondents are clearly disrupting the business of a competitor under the paragraph 4(b)(iii) of the Policy.
The Complainant also submits that the Respondents are using the disputed domain names intentionally to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of their websites or of a product or service on those websites under the paragraph 4(b)(iv) of the Policy.
The Complainant states that although the website linked to the disputed domain name <eccoshoesonlinestore.com> was discontinued as a result of enforcement action taken by the Complainant, the resulting “passive holding” should still be deemed to be in bad faith (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Complainant seeks a transfer of each of the four disputed domain names to itself.
B. Respondent
The Respondents did not reply to the Complainant’s contentions.
7. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Even in a case such as this where the Respondents have failed to reply to the Complaint, it is still necessary for the Complainant to prove its case in respect of each of the above elements. WIPO Panel Overview 2.0. paragraph 4.6.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the registered owners of both word and figurative trademarks for the mark ECCO. These include CTM and U.S. trademark for footwear in Class 25. The Complainant has also provided evidence of the significant worldwide recognition of the ECCO brand for footwear, which the Panel finds sufficient to establish that the Complainant also enjoys unregistered rights in the ECCO mark in numerous territories worldwide.
The first disputed domain name is <eccoschuhedeutschland.com>. Ignoring the gTLD suffix “.com”, this comprises the Complainant’s mark together with the German words for shoes and for Germany.
The second disputed domain name is <eccoshoesonlinestore.com>. In addition to the Complainant’s mark this comprises the generic or descriptive terms “online” and “store”.
The third disputed domain name is <eccoshoesshopusa.com>. This consists of the Complainant’s mark together with the generic or descriptive terms “shoes” and “shop” and the geographical term “USA”.
The fourth disputed domain name is <topeccoshoes.com>. This comprises the Complainant’s mark surrounded by the generic or descriptive words “top” and “shoes”.
In the view of the Panel, in none of the above cases does the addition of the generic, descriptive or geographical terms to the Complainant’s distinctive trademark ECCO serve to distinguish the disputed domain names from the Complainant’s mark. On the contrary, the use of the terms relating to the sale of shoes in each case serves only to increase the confusing similarity.
Accordingly, the Panel finds that each of the four disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
On the basis of the evidence submitted by the Complainant, none of which the Respondents have contradicted, the Panel finds that the Respondents have used the disputed domain names for the purposes of websites which impersonate the Complainant and offer goods under the Complainant’s word and stylized trademarks including counterfeit goods (in one disputed domain name this use had been discontinued subsequent to action by the Complainant at the date of the original Complaint). In these circumstances the Respondents have used the disputed domain names in a manner which dishonestly suggests an association with the Complainant or its goods and unfairly to profit from the Complainant’s goodwill. The use of the disputed domain names in this manner does not establish any rights or legitimate interests in the disputed domain names on the part of the Respondents.
In the case of the disputed domain name <eccoshoesonlinestore.com>, the Panel accepts the Complainant’s evidence that this disputed domain name was used in a similar manner to the other three disputed domain names until the Complainant took action to terminate that use. The Respondents’ holding of the disputed domain name has therefore been “passive” since that date, but there is nothing in these circumstances to indicate the existence of any rights or legitimate interests in the disputed domain name on the part of the Respondents.
Further, the Respondents have failed to reply to the Complaint and have not themselves provided any evidence of rights or legitimate interests in any of the disputed domain names, whether in accordance with the guidance provided in paragraph 4(c) of the Policy or otherwise. Nor does any other evidence of rights or legitimate interests on the part of the Respondents appear from the material available to the Panel.
In the circumstances, the Panel finds that the Respondents have no rights or legitimate interests in respect of any of the four disputed domain names.
C. Registered and Used in Bad Faith
The Complainant relies on the same factual circumstances as in the case of rights or legitimate interests.
Under paragraph 4(b) of the Policy, it shall be evidence of registration and use in bad faith if the Complainant can show that, by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of their websites or locations or of a product or service on their websites or locations. The Panel finds that the Respondents have done so in the case of each of the four disputed domain names. In particular, it is obvious from the Respondents’ use of the Complainant’s word and stylized marks for their websites offering counterfeit goods that the Respondents must have known of the Complainant’s ECCO marks and that they registered and have used the disputed domain names with the intention of unfairly profiting from the Complainant’s goodwill. This conduct plainly constitutes registration and use of the disputed domain names in bad faith for the purpose of the Policy.
The fact that the Respondents’ original use of the disputed domain name <eccoshoesonlinestore.com> was terminated following action by the Complainant does not affect the Panel’s finding. Likewise, the fact that the websites under the other three disputed domain names appear to have been also subsequently deactivated does not preclude the Panel’s finding of bad faith registration and use by the Respondents.
In the case of a so-called “passive” holding the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). It is clear to the Panel based on the evidence in this case that the Respondents are doing so.
Accordingly, the Panel finds that all four disputed domain names were registered and are being used in bad faith.
8. Decision
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 names: <eccoschuhedeutschland.com>; <eccoshoesonlinestore.com>; <eccoshoesshopusa.com>; and <topeccoshoes.com> be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: February 19, 2013