WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volcom, LLC v. Omar Ray
Case No. D2017-0995
1. The Parties
The Complainant is Volcom, LLC of Costa Mesa, California, United States of America ("United States"), represented by Kolster Oy Ab, Finland.
The Respondent is Omar Ray of Fort Myers, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <volcomsuomi.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 19, 2017. On May 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2017, 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.
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 May 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 21, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on June 28, 2017. 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, founded in 1991, designs, markets and sells sports-oriented clothing, footwear, and related goods and accessories. The Complainant is the owner of the VOLCOM trademark, and holds a number of registrations for the VOLCOM mark issued in the United States, the earliest of which issued on October 20, 1992. The Complainant also holds a European Union Trademark (EUTM) registration for VOLCOM, with a registration date of September 20, 2000, as well as a United States trademark registration issued on February 25, 2003, for the design mark ("VOLCOM logo"), depicted below:
The Respondent registered the disputed domain name <volcomsuomi.com> on March 6, 2017. The disputed domain name resolves to a Finnish language website on which clothing articles held out as genuine VOLCOM clothing are offered for sale. The word "Suomi" is Finnish for "Finland." The Respondent's website prominently displays the Complainant's VOLCOM mark and VOLCOM logo, as depicted below:
5. Parties' Contentions
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's registered VOLCOM mark. According to the Complainant, the disputed domain name is comprised of the Complainant's VOLCOM mark and the Finnish word "Suomi", which in Finnish is "Finland." The Complainant further observes that the Respondent's website is in the Finnish language.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent is not affiliated with the Complainant and has not been authorized to register domain names using the Complainant's VOLCOM mark, or to offer VOLCOM products for sale to Finland residents on the Respondent's website. According to the Complainant, the Respondent clearly was aware of the Complainant's VOLCOM mark when registering the disputed domain name. The Complainant submits the Respondent is using the disputed domain name to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source or affiliation of the Respondent's website.
On the basis of the foregoing, the Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith, solely for the purpose of taking advantage of the Complainant's rights in its famous VOLCOM trademark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See "Final Report of the First WIPO Internet Domain Name Process", April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's VOLCOM mark, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name. In this case, the Complainant's VOLCOM mark is clearly recognizable in the disputed domain name. The addition in the disputed domain name of the word "suomi", the Finnish word for "Finland", does not dispel the confusing similarity.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing has been made under paragraph 4(a)(ii) of the Policy. It is undisputed that the Respondent has not been authorized to use the Complainant's VOLCOM mark. The disputed domain name incorporates the Complainant's mark in its entirety, and resolves to a website where the Respondent prominently displays the Complainant's distinctive VOLCOM mark and logo, and offers the Complainant's goods for sale, without disclosing the nature of the Respondent's relationship, if any, with the Complainant.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if he has acquired no trademark 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 trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.
The most often cited UDRP decision in evaluating domain names of resellers, distributors or service providers is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter "Oki Data"). In Oki Data, the respondent was a reseller of the complainant's OKI DATA-branded products, and registered the domain name <okidataparts.com>. The panel in Oki Data concluded that the use of a manufacturer's trademark as a domain name by a reseller could be deemed a "bona fide offering of goods or services" within the meaning of the Policy only if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondents is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent's relationship with the trademark owner; and
- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Oki Data approach acknowledges certain scenarios relating to the potential legitimacy of using another's trademark in a domain name, often referred to as "nominative fair use". An overarching principle of the Oki Data approach is that a use of a domain name cannot be "fair" if it suggests affiliation with the trademark owner; nor can a use be "fair" if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, WIPO Case No. D2014-1359 (Oki Data approach considers and applies nominative fair use principles with reference to the limited scope of the Policy, and specifically with respect to the respondent's use of the complainant's mark in a domain name); Project Management Institute v. CMN.com, WIPO Case No. D2013-2035 ("[It] is critical to the establishment of rights or legitimate interests under Oki Data, and to a claim of nominative fair use,that the [r]espondent take steps to avoid using of the [c]omplainant's mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement").
The record in the instant case does not in the Panel's view reflect the Respondent's observance of the Oki Data criteria. Generally speaking, UDRP panels have found that domain names identical to a third-party trademark carry a high risk of such affiliation. Where the domain name consists of a trademark plus an additional term (at the Second - or Top-Level), UDRP jurisprudence broadly holds that this cannot constitute nominative fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. It is difficult to state with precision what qualitative aspects of such additional terms would automatically suggest such impersonation, sponsorship, or endorsement. However, certain geographical terms (e.g., <trademark-nyc.com>, or <trademark.nyc>), or terms with an "inherent Internet connotation" (e.g., <e-trademark.com>, <buy-trademark.com> or <trademark-online.com>) would seem, by their nature, to fall within this category. See WIPO Overview 3.0, section 2.5, and cases cited therein.
In this regard, it is the Panel's opinion that the disputed domain name selected by the Respondent, particularly when considered in conjunction with the content on the Respondent's website, misrepresents the nature of the "relationship" or (lack of) affiliation of the Respondent with the Complainant. The disputed domain name <volcomsuomi.com> is comprised of the Complainant's VOLCOM mark and the geographical term "Suomi" ("Finland"). The disputed domain name could easily suggest to Internet users that the Respondent is operating an official VOLCOM website, or convey the impression at the very least that the website is affiliated with, sponsored, or endorsed by the Complainant. Such affiliation, sponsorship, or endorsement is further suggested by the content of the Respondent's website, most notably the prominent display of the Complainant's distinctive VOLCOM mark and VOLCOM logo, coupled with the Respondent's failure to accurately disclosed its relationship (or lack thereof) with the Complainant on the website.
A respondent's use of a domain name is not "fair" in circumstances where the domain name falsely suggests affiliation with the trademark owner; nor can a use be "fair" if it is pretextual. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla, WIPO Case No. D2016-1698. Because the disputed domain name chosen by the Respondent invokes a strong suggestion of affiliation with the trademark owner and has not been satisfactorily disclaimed, such use is not fair, is not legitimate, and does not give rise to rights or legitimate interests. Rather, it constitutes the kind of behavior prohibited by the Policy.
Having regard to the relevant circumstances in this case, and absent any explanation from the Respondent, the Panel finds that the Respondent's use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant's mark, has not been commonly known by the disputed domain name, and has not otherwise demonstrated rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered 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 (the owner of the trademark 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) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, 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 location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is evident that the Respondent was aware of the Complainant and the Complainant's VOLCOM mark when registering the disputed domain name. It is a reasonable inference that the Respondent registered the disputed domain name based on the attractiveness of the Complainant's mark to drive traffic to the Respondent's website. In the attendant circumstances of this case, the Panel considers it more likely than not that the Respondent has intentionally attempted for commercial gain to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <volcomsuomi.com> be cancelled.
William R. Towns
Date: July 3, 2017
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.