WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The North Face Apparel Corp. v. Registrant of <thenorthfacecouponstore.com>
Case No. D2016-2150
1. The Parties
The Complainant is The North Face Apparel Corp. of San Leandro, California, United States of America (“United States”), represented by Davis Wright Tremaine LLP of United States.
The Respondent is Registrant of <thenorthfacecouponstore.com> of Yantai, Shandong, China.
2. The Domain Name And Registrar
The disputed domain name <thenorthfacecouponstore.com> is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2016. On October 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 2016, 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.
On October 31, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 4, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2016. On November 16, 2016, the Center received a message sent from a third party email address which is not substantial to the proceeding. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on November 30, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on December 6, 2016. 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 an american corporation which designs, manufactures and sells a famous line of clothing and accessories. It operates an extensive website featuring information about its goods and activities throughout the world, namely “www.thenorthface.com".
The complainant is the registered owner of the the north face trade mark. The trade mark has been registered in many countries across the world including in the united states (u.s. Trade mark registration no. 0,983,624, registered on May 14, 1974). The the north face trade mark was first used in june 1968.
The complainant asserts its the north face trade marks have become famous through its extensive use and registrations around the world. Millions of dollars in advertising and promotional activities of the complainant’s products have been spent. Valuable goodwill and reputation have been developed and associated with the complainant and its products.
The disputed domain name was registered on august 26, 2016, and redirects to a website selling what appears to be counterfeit products.
5. Parties’ Contentions
(i) The disputed domain name was registered over 42 years after the registration of the first of the Complainant’s THE NORTH FACE mark. The disputed domain name is identical or confusingly similar to the Complainant’s said trade mark; it simply combines the THE NORTH FACE trade mark with the descriptive terms, “coupon” and “store”, and the generic Top-Level Domain (“gTLD”) “.com”.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. There is no relationship between the Complainant and the Respondent which would give rise to any licence, permission, or authorization by which the Respondent could use or own the disputed domain name incorporating the Complainant’s THE NORTH FACE mark. The Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent operates a website at the disputed domain name offering the Complainant’s products and creating the appearance of being the Complainant itself or being authorized by the Complainant. The THE NORTH FACE trade marks appear throughout the Respondent’s website, which is a clear attempt by the Respondent to mislead Internet users as to the source of the website and the products offered for sale. The goods sold on the Respondent’s website are counterfeit.
The registration of a domain name incorporating the Complainant’s famous mark does not confer any rights or legitimate interests in the disputed domain name but, rather, constitutes bad faith. Where, as in this case, the Complainant’s THE NORTH FACE trade mark is so well known and widely recognized, there can be no legitimate use by the Respondent.
The Respondent had knowledge of the Complainant’s THE NORTH FACE marks when it registered the disputed domain name.
(iii) The Respondent registered and is using the disputed domain name in bad faith. The Complainant’s THE NORTH FACE trade mark is well known and the registration therefore is suggestive of bad faith. Further, the Respondent is using the disputed domain name to sell counterfeit THE NORTH FACE products. The Respondent’s sole interest is to unlawfully profit from the use of the Complainant’s THE NORTH FACE trade marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement is Chinese but the Complainant requested that English be adopted as the language of the proceeding for the reasons that:
(i) The disputed domain name was registered and is used in connection with a website that is exclusively in English, and used to sell counterfeit goods bearing the Complainant’s English language marks.
(ii) The Complainant conducts its business principally in English, as does its representative in this proceeding. Conducting the proceeding in Chinese would be highly inconvenient and expensive for the Complainant.
(iii) Since the Respondent uses the disputed domain name in connection with an English language website and to conduct business selling counterfeit goods bearing English-language marks, it has chosen to communicate to the world at large in English. Justice would be served by the administrative proceeding being conducted in English.
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Panel finds in this case that the Respondent is comfortable and familiar with English. Weighing the various interests of the respective parties in this case and the need to ensure that the administrative proceeding takes place with due expedition (per paragraph 10(c) of the Rules), the Panel determines that it would be appropriate for English to be the language of the proceeding. The disputed domain name comprises English terms and an English-language brand name. The Panel does not believe that the Respondent would be prejudiced if English were the language of the proceeding. To impose a requirement for the Complainant to translate all the documents and evidence into Chinese would be excessive in the circumstances and would delay the proceeding. If there were any legitimate issues or concerns, the Respondent should have voiced these when given the opportunity to. It did not.
The Panel therefore determines that English is to be adopted as the language of the proceeding.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has common law and registered rights in the THE NORTH FACE mark.
The disputed domain name differs from the said trade mark only by the addition of the descriptive or generic terms “coupon” and “store”. These additional terms are, in the Panel’s view, differences which are not significant and do not serve to alter the overall impression of the disputed domain name which is, for all intents and purposes under the Policy, confusingly similar to the Complainant’s THE NORTH FACE trade mark. The Complainant’s THE NORTH FACE mark is easily identifiable in the disputed domain name. The gTLD “.com” has no relevance to the consideration of the issue of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark since it is a technical requirement of a domain name registration.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trade mark THE NORTH FACE.
Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that “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 [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] 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) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent has] acquired no trade mark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not filed any response. In failing to do so, it has not invoked any of the circumstances which could demonstrate its rights to and/or legitimate interests in the disputed domain name.
Notwithstanding the Respondent’s default, the Complainant is still required to establish each of the elements stipulated under paragraph 4(a) of the Policy. In relation to paragraph 4(c) of the Policy, the Complainant has to satisfy a minimum requirement of showing prima facie evidence of the Respondent’s lack of rights to or legitimate interests, in the disputed domain name. (See Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.0, Second Edition.)
The Panel concludes in this case that a prima facie case has been established, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Complainant has at any time granted a license or permitted the Respondent to use the Complainant’s THE NORTH FACE trade mark or to apply for any domain name incorporating the Complainant’s trade mark; there is no evidence that the Respondent is known by the disputed domain name; and there is no evidence that the Respondent is using the disputed domain name in connection with a legitimate non-commercial or fair use of the disputed domain name. On the contrary, the Respondent’s website is clearly designed and intended to mislead Internet consumers into thinking that the Respondent’s website is an authentic website of the Complainant’s or is otherwise connected with or endorsed by the Complainant.
Hence, in the absence of evidence to the contrary, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that “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”:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The facts presented by the Complainant support a finding of bad faith registration and use. Although the Complainant has asserted that the goods sold from the Respondent’s website are counterfeit, no direct evidence was presented by the Complainant. The Panel therefore does not make any determination on this issue. Notwithstanding, the Panel agrees that the Respondent could not have been ignorant of the Complainant’s THE NORTH FACE mark when it registered the disputed domain name. The THE NORTH FACE trade mark had, by the time the disputed domain name was registered, achieved a high level of reputation and recognition. Moreover, looking at the evidence of how the disputed domain name has been used by the Respondent, it obvious that the Respondent deliberately targeted the Complainant’s famous trade mark for profit; this constitutes opportunistic bad faith. The disputed domain name was evidently registered in an attempt to create confusion and to attract Internet users to its website for commercial gain (paragraph 4(b)(iv) of the Policy). Earlier panel decisions under the Policy have also held that the wholesale incorporation of a well-known trade mark into a domain name tends to support a finding of bad faith registration and use. It cannot be envisaged how the Respondent could justify its choice of the disputed domain name when what is evident is that the disputed domain name was registered for the purpose of misappropriating the Complainant’s THE NORTH FACE trade mark.
The Panel therefore concludes that paragraph 4(a)(iii) of the Policy has been established.
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 <thenorthfacecouponstore.com> be transferred to the Complainant.
Date: December 20, 2016