WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VF Corporation v. Vogt Debra

Case No. D2016-2650

1. The Parties

The Complainant is VF Corporation of Greensboro, North Carolina, United States of America ("United States"), represented by Davis Wright Tremaine LLP, United States.

The Respondent is Vogt Debra of Santa Barbara, California, United States.

2. The Domain Names and Registrar

The disputed domain names <bagpakonline.com> and <eastpake.com> are registered with Internet Domain Service BS Corp (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 30, 2016. On January 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 4, 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 January 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 30, 2017.

The Center appointed William R. Towns as the sole panelist in this matter on February 6, 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 for more than twenty-seven years has designed, manufactured and sold backpacks, brief cases, luggage, duffle bags, book bags, and other travel accessories under the EASTPAK mark. The Complainant owns five United States trademark registrations for EASTPAK, the first of which was issued by the United States Patent and Trademark Office ("USPTO") on February 14, 1989. The Complainant registered the word plus design mark EASTPAK U.S.A., depicted below, in February 1999. The EASTPAK U.S.A. logo is displayed on the Complainant's official website at "www.eastpak.com".

The Respondent registered the disputed domain names <bagpakonline.com> and <eastpake.com> on December 7, 2016. The website to which the disputed domain names until recently resolved¹ ("Respondent's website") offers for sale at lower prices what are represented as authentic EASTPACK products. The Respondent's website prominently displays the Complainant's stylized EASTPAK U.S.A. logo, as depicted above, and adopt the look and feel of the Complainant's official website. The Complainant's EASTPAK mark is recognizable in the images of many of the products offered for sale on the Respondent's website.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to the Complainant's EASTPAK mark, which the Complainant asserts is a famous mark. The Complainant notes that the disputed domain name <eastpake.com> incorporates the Complainant's EASTPAK mark in its entirety, and submits that the addition in the domain name of the letter "e" following "eastpak" does not serve to dispel confusing similarity. The Complainant further asserts that the disputed domain name <bagpakonline.com> appropriates the "PAK" element of the Complainant's EASTPAK mark, which when combined with the generic terms "bag" and "online" does not distinguish this disputed domain name from the Complainant's EASTPAK mark, but rather is likely to create Internet user confusion.

The Complainant maintains that the Respondent lacks any rights or legitimate interest in the disputed domain names. The Complainant explains that the disputed domain names were registered by the Respondent long after the Complainant had established rights in the EASTPAK mark. The Complainant submits given the fame of the EASTPAK mark that the Respondent was aware of the Complainant's mark when registering the disputed domain names. The Complainant avers that the Respondent has not been authorized or licensed to use the Complainant's mark, but instead has misappropriated the Complainant's mark, intentionally seeking to trade on the Complainant's mark to create Internet user confusion and profit from the sale of counterfeit goods. The Complainant submits this does not constitute use of the disputed domain names in connection with a bona fide offering of goods or services, nor qualify as a legitimate noncommercial or other fair use of the disputed domain names.

The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Complainant reiterates that the Respondent intentionally is using the disputed domain names to divert Internet users to the Respondent's website in order sell counterfeit imitations of the Complainant's products. The Complainant submits that the use of another's mark to offer unauthorized or counterfeit goods is strong evidence of bad faith, and that the record clearly demonstrates that the Respondent is using the disputed domain names intentionally to attract for commercial gain 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 Respondent's website or the products offered for sale thereon.

B. Respondent

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 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy 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, 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 names <eastpake.com> and <bagpakonline.com> are confusingly similar to the Complainant's EASTPAK mark, in which the Complainant has established rights. In considering this issue, the first element of the Policy serves essentially as a standing requirement.² The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.

The Complainant's EASTPAK mark is clearly recognizable in the disputed domain name <eastpake.com>, which differs from the Complainant's mark only by addition of the end letter "e". This slight variation is strongly evocative of the practice commonly referred to as "typosquatting" – the intentional registration of a domain name that is a common or obvious misspelling of a mark, and supports a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph 1.10. While the Complainant's EASTPAK mark is not as easily recognized in the disputed domain name <bagpakonline.com>, the PAK element of the Complainant's mark is recognizable, and is combined with the descriptive terms "bag" and "online". In addition, both of the disputed domain names resolved to an identical website displaying the Complainant's EASTPAK logo and products bearing the EASTPAK mark. Under this broader context and on balance, the Panel concludes that this disputed domain name also is confusingly similar to the Complainant's mark for purposes of the first element of the Policy. See Zippo Manufacturing Company v. Domains by Proxy, LLC and Paul Campanella, WIPO Case No. D2014-0995.

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 under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant's EASTPAK mark. The Respondent notwithstanding has registered and used the disputed domain names, both of which are confusingly similar to the Complainant's mark, to divert Internet users to a website on which it is likely that counterfeit goods are being passed off as the Complainant's genuine EASTPAK-branded goods.

Pursuant to paragraph 4(c) of the Policy, a 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 disputed 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 formal 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.

It is abundantly clear from the record that the Respondent was aware of the Complainant and had the Complainant's EASTPAK mark in mind when registering the disputed domain names. The Panel finds that the Respondent registered the disputed domain names in order to exploit and profit from the Complainant's rights in the EASTPAK mark through the creation of Internet user confusion. Considering the overall look and feel of the Respondent's websites, the prominent display of the Complainant's EASTPAK logo and mark on this websites, and the absence of any effective disclaimer, Internet users easily could be confused whether the Respondent's website is affiliated with or have the endorsement or sponsorship of the Complainant, or whether the goods being offered on this website are in fact genuine EASTPAK-branded goods. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774. Absent any explanation from the Respondent, the circumstances reflected in the record before this Panel strongly suggest that counterfeit goods are being offered on the Respondent's website.

Even were the Panel to assume arguendo that the Respondent's website is offering the Complainant's authentic goods as opposed to imitations thereof, the consensus view of UDRP panelists is that a reseller offering trademarked goods or services using a domain name containing the trademark may establish rights or legitimate interests in the domain name only where certain conditions are met. The most often cited UDRP decision in evaluating domain names of resellers and distributors 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 OKIDATA-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 respondent 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").

Even a cursory review of the record in this proceeding makes clear that the Respondent has not satisfied the Oki Data criteria. The Respondent clearly has not disclosed the nature of its relationship with the Complainant. More to the point in this case, the Respondent by all appearances is attempting to pass itself off as the Complainant. Even if the goods offered on the Respondent's websites are authentic EASTPAK products – which the Panel considers unlikely – the disputed domain names suggest to Internet users that the websites to which they arrive are affiliated with, sponsored, or endorsed by the Complainant. Such use is not fair, is not legitimate, and does not give rise to rights or legitimate interests.

Having regard to all of the relevant circumstances in this case, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain names. The Respondent has not been authorized to use the Complainant's mark, and there is no indication that the Respondent has been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain names.

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 clear from the relevant circumstances that the Respondent was well aware of the Complainant and had the Complainant's EASTPAK mark in mind when registering the disputed domain names. The record convincingly demonstrates that the Respondent's primary motive in relation to the registration and use of the disputed domain names was to capitalize on or otherwise take advantage of the Complainant's trademark rights, through the creation of Internet user confusion. In view of all of the foregoing, the Panel concludes that the Respondent registered and has used the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 names <bagpakonline.com> and <eastpake.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: February 20, 2017

¹ The disputed domain names currently do not resolve to active websites.

² See WIPO Overview 2.0, paragraph 1.2.