Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is Oakley, Inc. – One Icon, Foothill Ranch, California 92610, USA ("Complainant").

The Respondent in this administrative is Mr. Kenneth Watson residing at 3639 Terrace Place, Carlsbad, CA 92008, USA.

The domain names in question are <oakleyshoes.com>, <oakleyfootwear.com> and <oakleywatches.com>.

Network Solutions Inc., ("NSI") is the Registrar for <oakleyfootwear.com> and <oakleywatches.com>. Domain Names.com Technical is the Registrar for <oakleyshoes.com>.

On November 29, 2000, a hard copy of the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center"). On December 5, 2000, an electronic copy of the Complaint was received by the Center in reply to the Complaint Deficiency Notification.

On December 5, 2000, a Request for Registrar (Domain Names.com Technical) Verification was sent to the Registrar.

On December 12, 2000, the Registrar (Domain Names.com Technical) confirmed that it is the Registrar of the domain name <oakleyshoes.com> and that Kenneth F. Watson is the registrant.

On December 13, 2000, the Center issued a Notification of Complaint and Commencement of the Administrative Proceeding to the Respondent concerning the domain name <oakleyshoes.com>.

On December 26, 2000, the Center received a Response by e-mail. On December 27, 2000, the Center acknowledged receipt of the Response. On January 10, 2001, the Center received a hard copy of Respondent’s Response.

On January 9, 2001, the Complainant submitted a First Amended Complaint adding two domain names: <oakleyfootwear.com> and <oakleywatches.com>. On January 16, 2001, Complainant submitted a Second Amended Complaint.

On January 16, 2001, the Center requested Registrar (NSI) verification for the Second Amended Complaint. On January 18, 2001, Registrar (NSI) verification was received.

On January 19, 2001, the Center issued Notification of Complaint and Commencement of Administrative Proceeding based on the Second Amended Complaint. On February 12, 2001, the Center issued Notification of Respondent’s Default with respect to the Response that was due answering the Second Amended Complaint.

On February 15, 2001, Complainant requested a suspension. On February 19, 2001, the Center issued Notification of Suspension. On March 16, 2001, Complainant requested a further suspension. On March 20, 2001, the Center gave Notification of Further Suspension.

On April 6, 2001, the Complainant requested that the proceeding be reinstated. On April 9, 2001, the Center gave Notification of Reinstatement.

On April 20, 2001, the Center invited Mr. Kenneth A. Genoni to act as a sole panelist in these proceedings and having received a Statement of Acceptance and Declaration of Impartiality from the said Kenneth Genoni, the Center proceeded to appoint the Administrative Panel consisting of a single member on April 20, 2001. On the same date, the case file was transferred to the Administrative Panel.

In the view of the Administrative Panel, the proper procedures were followed and this Administrative Panel was properly constituted.

Given the Respondent’s failure to file a Response to the First Amended Complaint and the Second Amended Complaint, the Administrative Panel accepts as true and accurate all statements of fact relating to the domain names <oakleyfootwear.com> and <oakleywatches.com> made by the Complainant in its submissions (see: Talk City Inc. v. Michael Robertson, WIPO Case D2000-009, February 29, 2000; and EAuto, L.L.C. v. EAutoParts, WIPO Case D2000-0096, April 9, 2000).

The Complainant, "Oakley, Inc.," is a Washington corporation with its principal place of business located at One Icon, Foothill Ranch, CA 92610. Oakley, Inc. (hereafter "Oakley") is the owner of several trademark registrations, which include the name "Oakley." Specifically Oakley owns the following registrations registered in the United States Patent and Trademark Office:

Oakley is the manufacturer and seller of eyewear, footwear, apparel, watches and accessories and utilizes the Oakley name and logo in connection with sale of all of these goods, including footwear. Copies of the above registrations are attached as Annex 1.

Respondent in this Administrative Proceeding is an individual identified as Kenneth Watson, whose residence address is 3639 Terrace Place, Carlsbad, CA 92008. Copies of the printout of the database search conducted on November 13, 2000, as to <oakleyshoes.com>, and conducted on January 4, 2001, as to <oakleyfootwear.com> and on January 8, 2001, as to <oakleywatches.com>, are all attached hereto as Annex 2.

The Respondent is using the domain name <oakelyshoes.com> to attract customers to its web-site, which advertises custom footwear made to order and invites customers to "Please Visit Our Site Again Soon For Ordering Information and For Links To Porno Sites." When a user attempts to connect to <oakleyshoes.com> web-site, the user is automatically redirected to another web-site identified as <leyshoes.com>." A copy of that homepage is attached hereto as Annex 3.

Apparently, Respondent has not set up a web-site for <oakleywatches.com> as of yet, but Respondent has made attempts to sell the domain name to Complainant.

Complainant learned of <oakleyshoes.com> when Respondent contacted the Complainant for the purposes of selling this specific domain name to Complainant. The Respondent’s registration of the other two domain names came to the Complainant’s attention only after the original Complaint had been filed.

The Complainant argues that the domain names in dispute are identical or confusingly similar to the trademarks owned by Oakley in that they contain the Oakley name in conjunction with the names "shoes," "footwear" and "watches," all products that Oakley sells.

The Complainant further alleges that the Respondent has no rights or legitimate interest in respect to the domain names, and in fact, is using the domain name <oakleyshoes.com> to draw Oakley customers to its web-site that has no association with Oakley or its products, but that made reference to links to pornographic internet sites.

The Complainant also avers that Respondent registered the domain names in bad faith.

Complainant argues that the recent registration by Respondent of the domain names <oakleywatches.com> and <oakleyfootwear.com> were done in retaliation for the instigation of the instant proceeding and that Respondent’s bad faith intent is evident by the fictitious administrative contact listed by Respondent for <oakleyfootwear.com>.

Complainant further argues that the Respondent intentionally attempted to attract for financial gain Internet users to its web-site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web-site.

Respondent argued as follows:

"Oakley, Inc. does indeed hold several trademarks on the name Oakley. However, based on the evidence Oakley and their attorneys have presented on page 5 of their filing, each and every trademark Oakley owns, is strictly based on a wide variety of type sets only. Fact is, Oakley does not own one single trademark on any other variation of their name whatsoever. Additionally, the word shoe or shoes is a generic word that cannot be owned by any one single party. If Oakley’s intention is to represent itself as oakleyshoes, oakleysunglasses, oakleywatches, oakleyhats or any other products they may choose to market, then they should and could proceed in the same manner as anyone else by legally purchasing those and any other domain names of choice.

The site <oakleyshoes.com> is linked to our site Leyshoes.com. As you and our visitors can and do see, we show no affiliation, nor do we claim to have any affiliation to Oakley, inc. or to any of their products. The Complainant has failed to provide any documentation that can substantiate their allegations that our site is confusing to their customers. Furthermore, the Complainant has failed to demonstrate that they have made any effort up until now, to indeed secure any other domain names other than the one they currently own. After the extended period in which they have marketed their company as Oakley.com, clearly they have not felt the need to isolate any of their products and market such products under any other name other than Oakley.com. Our site which is still in development, makes and sells a wide variety of products that range from hand carved wooden shoes, hand made jewelry, bird houses and other hand made crafts that are all hand made by my uncle here in the United States. My Uncle, who has the legally born name Oakley Watson, resides in Fort Pierce Florida. My uncle Oakley Watson happens to share the exact spelling as the Complainant and has as much of a legal right to purchase as many domain names with any variation to his name in it as anyone else that shares the same name. Given the fact my Uncle Oakley and his name has been around for more than 60 years longer than the Complainant, why not then transfer the domain name Oakley to my uncle? However, that is not what we are asking for, in fact we are not so bold to think that we, he nor anyone else has any rights to such a wide spectrum of names that do or can exist. Oakley can and should maintain it’s domain name that they legally purchased, however they do not have the right to arbitrarily pick and choose which names they want to take depending on which products they may now or in the future want to sell.

Unlike other domain names that exist, we do not try nor do we attempt to profit from the Oakley, Inc. name. As stated above, we do not sell, resell nor attempt to sell any product that resembles any of Oakley Inc.’s products. Fact is, There are other companies that exist such as eoakley.com who sells replica oakley sunglasses, oakleysunglasses.com is a web-site that brings the user to gambling sites and a wide variety of other sites for purchasing products including nock off sunglasses and other products that Oakley sells. These are perfect examples of companies that are using the Oakley name and product line to profit it from. Incredibly, non-of these companies are being targeted in the same fashion as I have been. Clearly these are perfect examples of companies and individuals that are trying to capitalize on Oakley’s exact product line. Not one of these tactics has been demonstrated by my organization nor is that our intention.

In response to the Complainant’s allegations that we registered our domain name for the sole purpose of selling to the Complainant, that is completely inaccurate and unfounded. Our intention from the beginning was to create a web-site that would offer a wide variety of low budget home made products. During the development of our company, I was contacted by two rather large organizations that expressed their interest in purchasing my domain name. I at that time wasn’t all that interested, but willing to listen. During our conversations, one of the interested parties asked me if Oakley Inc. was one of the parties looking to purchase my domain name. It was at that time that one of the directors at Oakley, Inc (Vance Lommen) and I engaged in conversation. Vance Lommen from Oakley, Inc. asked me how I came about the name, I simply told him that I bought it! He then responded by saying that Oakley, Inc. wanted it! He also asked me how much they would have to offer me to get it; I told him that I had not planned on selling it, so I didn’t know. I said if you really want it, make an offer and I would consider it if I decide to sell. After several weeks of not hearing back from Oakley, Inc., Oakley’s attorney Janet Kaufman then contacted me. Janet proceeded to tell me that," My client wants the domain name and we are going to sue you for it". After several attempts to rectify this matter that we could mutually agree upon, Oakley’s position has not changed. They remain hostile and wish to maintain their position of Big Business that wants to bully the little guy until they get what they want!"

Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (Paragraph 4.a.(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and

C. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

The Complainant has provided evidence of US registration for its OAKLEY mark. I conclude that the Complainant – as registered proprietor of the mark OAKLEY – has established the first requirement of this paragraph.

The second requirement is that the domain name be identical or confusingly similar to the marks. Complainant asserts that the domain names are identical or confusingly similar to its mark. In my opinion this is, obviously, correct. Respondent argues that the Complainant’s mark is for "Oakley" not "Oakleyshoes," "Oakleywatches" and "Oakleyfootwear." One does not avoid or eliminate the likelihood of confusion by adding the name of the goods to the registered trademark of the Complainant, especially where Complainants trademark registrations are for the goods being advertised by the Respondent.

Respondent also argues that there is no proof of actual confusion. The law does not require proof of actual confusion. The likelihood of confusion is sufficient. Also in the last paragraph herein of Respondent’s contentions, Respondent states that "one of the interested parties asked me if Oakley, Inc. was one of the parties looking to purchase my domain name," which suggests to me the that interested party believed that Respondent’s domain name did suggest that Oakley, Inc. was or should be the registrant for the domain name.

The Complainant has shown that it has rights in a trademark, and that the domain names are identical or confusingly similar to this mark. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.

The Respondent had constructive notice of the Oakley trademark because the trademark was registered. In addition Respondent has not denied actual notice of the mark in response to Complainant’s charge of the bad faith adoption. I conclude therefore that the Respondent had actual notice.

Respondent has not alleged or presented any evidence of use of the Oakley name for commercial purposes prior to constructive or actual notice. In fact, the only use by the Respondent reflected in the record is the <oakleyshoes.com> web-site. When a user attempts to connect to the <oakleyshoes.com> web-site, the user is automatically redirected to another web-site identified as "leyshoes.com." Respondent argues that he can legitimately use the name oakley because his uncle "who has the legally born name Oakley Watson" has a legal right to purchase as many domain names with any variation to his name in it as anyone else that shares the same name. I note first that Oakley Watson is not the registrant and there is no indication in the record of Respondent obtaining any legal rights from Uncle Oakley Watson. More importantly there is nothing in the record to indicate that Oakley Watson or the Respondent ever made commercial use of Oakley Watson’s name in connection with the sale of any goods. It is clear that the value in the Oakley name has been created by the commercial use and registrations of the Complainant and it is also clear to me that Respondent is taking advantage of the value created by the Complainant.

Respondent also argues that Complainant has not asserted its trademarks against other infringers but in my opinion that is of no legal relevance to this matter.

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

I have concluded that the Respondent registered and has continued to act in bad faith. I have considered the following factors:

1. Respondent has never made any commercial use or tried to obtain a trademark registration for the Oakley name. The only use of the Oakley name by Respondent is for the domain names, which are the subject of the suit. That use began after Respondent had actual knowledge of the Oakley, Inc. trademarks.

2. The fact that the Registrant has the same name can be relevant. However, as mentioned above, Uncle Oakley Watson is not the registrant and there is no evidence or allegation that Respondent has obtained any legal rights from Uncle Oakley Watson. More importantly there is no indication in the record that Oakley Watson’s name was ever used in connection with the sale of any of Registrant’s goods. Therefore the Registrant is taking advantage of the value created by Oakley, Inc., not Uncle Oakley Watson.

3. The Respondent has not alleged any use of any of the domain names in question or the Oakley name prior to actual knowledge of the trademarks owned by Oakley, Inc.

4. There is no suggestion that the Respondent’s use is a non-commercial or fair use of the mark to identify the web-site.

5. There is evidence that the Registrant intended to divert customers from the trademark owners web-site, Oakley.com, to a web-site that could harm the goodwill of the mark. The invitation on Registrant’s web-site to provide information for links to porno sites could harm the Oakley name or reputation.

6. The Respondent has offered to sell the marks to Oakley for a financial gain.

7. The Respondent’s intentional provision of misleading false contact information in the application for registration for <oakleyfootwear.com> is further evidence of bad faith.

8. The Registrant also acquired multiple domain names, which are confusingly similar to Complainant. This is evidence of bad faith, especially the domain name <oakelywatches.com> because there is no allegation that Respondent even sells watches.

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs that the domain names <oakleyshoes.com>, <oakleyfootwear.com> and <oakleywatches.com> be transferred to the Complainant.

Kenneth A. Genoni
Sole Panelist