WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JanSport Apparel Corp v. Name Redacted
Case No. D2018-0063
1. The Parties
Complainant is JanSport Apparel Corp of Wilmington, Delaware, United States of America ("United States"), represented by SILKA Law AB, Sweden.
Respondent is Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <fr-eastpak.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 11, 2018. On January 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2018. The Center received email communications from a third party on January 23, 24, 25 and 26, as well as a standard "Response" document on February 2, 2018, all in the French language, claiming that this third party was not the registrant of the disputed domain name, but rather the victim of identity theft.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 15, 2018. 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 a company organized under the laws of the United States whose business is the manufacturing of backpacks, shoulder bags and other travel products.
Complainant has provided evidence that it is the registered owner of the following trademarks relating to the designation "Eastpak" with protection, inter alia, for the territory of France where the registered owner of the disputed domain name according to the WhoIs information allegedly is domiciled:
- Word Mark EASTPAK, European Union Intellectual Property Office ("EUIPO"), Registration No: 000037077, Registration Date: March 23, 1998, Status: Active;
- Word mark EASTPAK, EUIPO, Registration No: 009968363, Registration Date: October 18 2011, Status: Active.
Moreover, Complainant has evidenced to own the domain name <eastpak.com> which resolves to Complainant's official website at "www.eastpak.com" promoting Complainant's business and products.
The disputed domain name was registered on November 28, 2017. As of the time of the rendering of this decision, the disputed domain name is inactive and does not resolve to any content on the Internet. Complainant, however, has provided evidence that at some point before the filing of this Complaint, e.g., on December 24, 2017, the disputed domain name redirected to a website at "www.fr-eastpak.com" which reproduced Complainant's official EASTPAK logo and offered, inter alia, backpacks and wheeled luggage bearing Complainant's official logo for online sale at significantly discounted prices.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties' Contentions
Complainant contends that the EASTPAK trademark was first created nearly 40 years ago and has been extensively used ever since to have meanwhile become a household name in luggage. Complainant's EASTPAK products are also present in France through the local operated site at "www.eastpak.com/fr-fr/".
Complainant submits that the disputed domain name is confusingly similar to Complainant's EASTPAK trademark since it directly incorporates the latter with the mere addition of the country-code identifier "fr" together with a hyphen. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) the disputed domain name incorporates a trademark which is not owned by Respondent, (2) Respondent is not known by the name "Eastpak", (3) Respondent makes unauthorized use of Complainant's trademark and copyright protected images and (4) the significantly discounted sales prices offered by Respondent in December 2017 indicate that the concerned products are counterfeit. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Complainant's EASTPAK trademarks clearly predate the registration of the disputed domain name, (2) the EASTPAK trademark is a known trademark including in France, (3) Respondent apparently has no rights of its own in relation to the designation "Eastpak", but rather has registered several other domain names relating to famous fashion trademarks such as LACOSTE and DIESEL and, finally, (4) Respondent must have been aware of Complainant's EASTPAK trademark by the time of the registration of the disputed domain name and Respondent's overall behavior indicates that it did not have any good faith intentions when registering and using the disputed domain name.
Respondent did not reply to Complainant's contentions; the standard "Response" document received by the Center from a third party on February 2, 2018, essentially states that the third party was a victim of identity theft.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <fr-eastpak.com> is confusingly similar to the EASTPAK trademark in which Complainant has rights.
The disputed domain name incorporates the EASTPAK trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8), that the addition of a descriptive term or geographic wording to a trademark in a domain name is normally insufficient, in and of itself, to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the country-code identifier "fr" together with a hyphen does not dispel the confusing similarity arising from the incorporation of Complainant's EASTPAK trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant's undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant's EASTPAK trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term "Eastpak". Finally, Respondent apparently has not used the disputed domain name for a bona fide offering of products or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent apparently redirected the disputed domain name to a website which at some point before the filing of this Complaint displayed Complainant's official logo without any permission to do so and offered what appears to be counterfeit EASTPAK products for online sale.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Noting that the disputed domain name is alleged to have been registered by a third party using the contact information of an individual, without the consent of that individual, there is nothing in the record that would support a finding of rights or legitimate interests in the disputed domain name on the part of Respondent.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The use of the disputed domain name, which is confusingly similar to Complainant's EASTPAK trademark, to resolve to a website which offers what appears to be counterfeit EASTPAK products for online sale while displaying Complainant's official logo is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusing with Complainant's EASTPAK trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, the Panel has particularly noted the email communications of January 23, 24, 25 and 26, 2018, as well as the standard "Response" document of February 2, 2018, which was sent by a third party claiming that it did not know of the registration and use of the disputed domain name, thus allegedly was a victim of identity theft. The Panel is not in a position to verify such third party's contentions, but independent thereof, the outcome of this proceeding would still be the same. If the third party in fact is the registered owner of the disputed domain name, it apparently did not claim to have used the disputed domain name in good faith. Had, on the contrary, Respondent engaged in identity theft when registering the disputed domain name, this would indeed support the Panel's finding of registration and use of the disputed domain name in bad faith.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <fr-eastpak.com> be transferred to Complainant.
Stephanie G. Hartung
Date: February 23, 2018
1 Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent's name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See: ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.