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and Mediation Center
ADMINISTRATIVE PANEL DECISION
ID Group v. Field Lake and Sky LLC
Case No. D2006-1337
1. The Parties
The Complainant is ID Group, of Roubaix, France, represented by Cabinet Fidal, France.
The Respondent is Field Lake and Sky LLC, of Cheyenne, Wyoming, United States of America.
2. The Domain Name and Registrar
The disputed domain name <okaidiland.com> is registered with NameKing.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2006. On October 19, 2006, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On October 23, 2006, NameKing.com transmitted by email to the Center its verification response confirming that:
(a) the domain name is registered with NameKing.com;
(b) the Respondent is listed as the registrant;
(c) the Respondent’s contact details for the administrative, billing, and technical contact are as given in the whois search and correct; and
(d) English was the language of the registration agreement used by the Respondent
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint by email and international courier, and the proceedings commenced on October 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2006.
The Center appointed Warwick A. Rothnie as the sole
panelist in this matter on November 29, 2006. 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
According to the Complaint, the Complainant sells clothes and accessories for children as well as games and toys. It sells its products through directly owned shops and a network of franchisees throughout the world. Annex 8 lists almost 300 stores in France and its territories from which its products are available, as well as outlets in another 26 countries.
Amongst the 180 trademarks in 60 countries that it claims to have registered, the Complaint provides evidence that the Complainant has registered (under its former name Okaпdi S.A.) the following trademarks:
(a) TM No. 01 3 124 525, OKAПLAND, in France from
October 5, 2001, in classes 9, 25, 28, 38 and 42 for (broadly) clothes, shoes,
sportswear, toys and software;
(b) International TM No. 790 524, OKAПLAND, from September 23, 2002,
extending to Austria, Benelux, China, Czech Republic, Egypt, Germany, Hungary,
Italy, Morocco, Poland, Slovakia, Spain, Switzerland, Turkey, the United Kingdom
and Vietnam for goods in classes 9 and 25;
(c) a number of national and international registrations
for OKAПDI in a range of countries including France (No. 97668924) and, in semi-figurative
form the United States of America ((No. 2,831,219 being registered in April 2004
in respect of goods in international classes 14, 16, 24, 25 and 26).
The Respondent registered the disputed domain name on December 17, 2005.
As of July 2006, the domain name resolved to a website headed “Okaidiland.com What you need, when you need it”, print outs from which are included in Annex 2 to the Complaint. There then followed a series of links, many of which were duplicated under headings such as “Popular Categories” and “Favorite Categories”, to “Games”, “Code Secret”, “Girls Clothes”, “Secret Game”, “Video Game”, “Computer Game”, “Kid”, “Baby Shoes”, “Boys Clothes” etc.
Clicking on the link for “Baby Clothes” generated a page including links to “http://Boots.com”, “http://www.mayphillipsdesigns.com”, “http://www.LordandTaylor.com” and so on.
Undertaking a search for “clothes” on the homepage generated results for “Gap - Official Site”, “Cr e ton T-shirt online”, “http://www.productpilot.com” and “Rocawear Street Wear” etc.
At the time of preparing this decision, however, the
domain name did not resolve to an active website.
5. Discussion and Findings
There has been no Response. The address details used by the Center, however, have been confirmed as correct by NameKing.com, the registrar. In addition to emailing the documentation to the Respondent at the email address confirmed by the Registrar as correct, the Center couriered hard copies to the Respondent’s physical address. The courier was redirected to an address in Colorado where it was signed for by the recipient.
Paragraph 2(a) of the Rules requires the Center to forward a copy of the Complaint to the Respondent:
a) When forwarding a complaint to the Respondent, it shall be the Provider’s responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:
(i) sending the complaint to all postal-mail and facsimile addresses (A) shown in the domain name’s registration data in Registrar’s Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration’s billing contact; and
(ii) sending the complaint in electronic form (including annexes to the extent available in that form) by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing contacts;
(B) postmaster@<the contested domain name>; and
(C) if the domain name (or “www.” followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e-mail address shown or e-mail links on that web page; and
(iii) sending the complaint to any address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other addresses provided to the Provider by Complainant under Paragraph 3(b)(v).
Accordingly, the Panel is satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention and the Respondent has had an adequate opportunity to put his, her or its case in rebuttal of the Complaint.
Paragraph 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as paragraph 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
Under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:
(i) The 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 in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel deals with each of these elements in turn.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?
At a minimum, the Complainant has established ownership of the trademark OKAПDILAND,
registered in France under TM No. 01 3 124 525 and registered in the International
Register under TM No. 790 524. The Complainant has also established ownership
of the trademark OKAПDI in France, the International Register and, before the
Respondent registered the domain name, the United States of America.
Apart from the addition of the gTLD “.com”, the domain name is identical to the OKAПDILAND registered trademarks.
It is well established, however, that the addition of the gTLD can and should
be disregarded for the purposes of the comparison required under paragraph 4(a)
of the Policy as a generic or descriptive feature. See for example Rollerblade,
Inc. v. Chris McCrady WIPO Case No. D2000-0429,
Ticketmaster Corporation v. DiscoverNet Inc., WIPO
Case No. D2001-0252 and Williams-Sonoma d/b/a Pottery Barn v. John Zuccarini
d/b/a Country Walk, WIPO Case No. D2002-0582.
Similarly, the addition of the generic or descriptive terms “land” or “land.com” to the domain name is nonetheless confusingly similar to the Complainant’s registered trademarks for OKAПDI.
Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark rights as the only distinguishing component of it is identical to the distinctive element of the Complainant’s trademarks.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.
The Complainant points out that the domain name does not resemble and is not derived from the Respondent’s legal name.
The Complainant states that the Respondent is not linked with it in any way and, further, the Complainant has not granted the Respondent any licence or permission to use the OKAПDI or OKAПDI LAND trademarks.
The word OKAПDI does not appear to have any meaning apart from as the brand
name for the Complainant’s products.
The website to which the domain name resolved (at least before the Complaint was lodged) basically consisted of a collection of links to a wide range of products and services, many of which were gathered under the heading “Sponsored links”. That heading is typically used on the Internet to indicate paid advertising.
Further, it appears from Annex 2 that many, if not all, of the sponsored and other links collected on the Respondent’s website were to goods and services not associated with the Complainant and, in many cases, apparently competing with the Complainant’s products.
As a result, the Complainant charges that the Respondent has deliberately adopted the domain name with the intention of diverting people from the Complainant’s products to other commercial websites offering similar or products and services.
The Respondent has not attempted to rebut this, or any other, allegation.
Such use cannot be described as a legitimate noncommercial or fair use for the purposes of paragraph 4(c)(iii) above. Nor is does it qualify as a bona fide offering of goods or services.
In the circumstances, the Complainant has discharged its onus of establishing a prima facie case that the Respondent has no rights or legitimate interests in the domain name. In the absence of any credible rebuttal, therefore, the Panel finds that the Complainant has established sufficiently for the purposes of the Policy that the Respondent does not have rights to or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that
the disputed Domain Name has been registered and used in bad faith. In connection
with this factor, paragraph 4(b) of the Policy provides:
b) Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), 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 you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The Complainant contends that the Respondent has registered and uses the domain name for commercial gain to point to a website where products competing with the Complainant’s products are offered for sale.
The Respondent has not sought to deny the Complainant’s allegations.
As already noted, the distinctive part of the domain name is the word OKAПDI, which appears to be inherently distinctive. It does not appear to be descriptive of anything. It is not a term naturally suggested by the Respondent’s own name or the goods and services available from its website.
The Policy does not prohibit the operation of a website which contains a series
of links through to advertisers of goods and services or the registration of
a domain name to operate such a website. What the Policy does prohibit is the
registration and use of a domain name which is confusingly similar to someone
else’s trademark rights with the intention of trading on the reputation
or goodwill of that trademark. Such use is not bona fide in terms of
the Policy. See e.g. Edmunds.com, Inc. v. Ult. Search Inc. WIPO
Case No. D2001-1319 and Volvo Trademark Holding AB v. Unasi Inc.
WIPO Case No. D2005-0556.
The goods and services which have prominence on the site are clothing and computer related games. These are products, particularly clothing, of particular relevance to and competing with the Complainant’s own products. Given the nature of the distinctive element of the domain name, OKAПDI, and its use on a website to provide sponsored links to products in competition to the Complainant’s website, the inference is clearly open that the domain has been registered with knowledge of the Complainant’s trademarks. The Respondent has not sought to rebut that inference in any way.
Accordingly, the Panel finds that the domain has been registered and used in
bad faith contrary to the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <okaidiland.com>, be transferred to the Complainant.
Warwick A. Rothnie
Dated: December 15, 2006