WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JanSport Apparel Corp v. Feng Qi

Case No. D2017-1486

1. The Parties

The Complainant is JanSport Apparel Corp of Wilmington, Delaware, United States of America ("United States" or "US"), represented by SILKA Law AB, Sweden.

The Respondent is Feng Qi of Beijing, China.

2. The Domain Names and Registrar

The disputed domain names <eastpakba.com>, <eastpakbags.com>, <eastpakn.com>, <eastpaknow.com>, <eastpaksa.com>, <eastpaksale.com>, <eastpaksbuy.com>, <eastpaks.com> and <eastpakss.com> are 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 July 31, 2017. On August 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 2, 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 August 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 6, 2017.

The Center appointed Ian Blackshaw as the sole panelist in this matter on September 14, 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 is the owner of the following registered trademarks:

Copies of the corresponding registration certificates have been provided to the Panel.

EASTPAK is a registered trademark of the Complainant. The EASTPAK brand was first created almost 40 years ago by Eastern Canvas Products, Inc., a manufacturer of duffel bags, backpacks and safety equipment for the US Army. By the early 90s, the Complainant had a market-leading share among US East Coast colleges. After entering the luggage market in 1999, the Complainant has excelled in quality production of backpacks, messenger bags and suitcases, quickly making the EASTPAK brand a household name in luggage.

The Complainant also has an extensive team working with counterfeit products worldwide, and, on its website, customers of the Complainant are guided on how they can try to identify whether a product might be counterfeit. The Complainant is also present in China through partner websites, including the local Chinese website "www.p1.eastpak.com.cn".

The Complainant is also the owner, amongst others, of the domain names <eastpak.com>, <eastpak.asia> and <eastpak.com.cn> which were registered on September 15, 1995, November 30, 2007 and December 16, 2012 respectively. Details of these domain names have been provided to the Panel.

The disputed domain names were registered between June 14, 2017 and July 18, 2017. According to the Complainant's evidence, the disputed domain names <eastpaknow.com> and <eastpaksbuy.com> are inactive, while the other seven disputed domain names resolve to websites selling products under the Complainant's EASTPAK trademark.

5. Parties' Contentions

A. Complainant

The Complainant makes the following assertions:

The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The disputed domain names were registered between June and July 2017 and directly incorporate the Complainant's registered trademark EASTPAK.

The addition of the generic Top-Level Domain (gTLD) ".com" does not add any distinctiveness to the respective disputed domain names.

The disputed domain names use the Complainant's registered trademark EASTPAK, alongside the descriptive words "buy", "bags" "sale". The addition of these terms is not sufficient to distinguish or differentiate the disputed domain names from the Complainant's registered trademark EASTPAK as the terms are commonly-used terms by the Complainant to indicate that they offer products for sale.

The mere addition of the descriptive terms to the Complainant's EASTPAK registered trademark does not eliminate the confusing similarity between the Complainant's registered trademark EASTPAK and the disputed domain names, especially considering that the EASTPAK registered trademark has been used by the Complainant in conjunction with subsequent terms as "sale" and "bags".

The Respondent has no rights or legitimate interests in respect of the disputed domain names.

First of all, there is no bona fide offering of goods or services where the disputed domain names incorporate a trademark which is not owned by the Respondent, nor is the Respondent known by the name "Eastpak".

The tendency of the disputed domain names is to induce consumers into visiting the related websites under the misapprehension that the websites are endorsed by the Complainant where the Complainant offers products for sale at a discounted price. Seven out of the nine websites are currently active and the Respondent offers a large quantity of presumably counterfeit products and the Respondent makes unauthorized use of the well-known Complainant's registered trademark EASTPAK.

Additionally, the Respondent is using the Complainant's copyright-protected images without authorization. The potential customer can also create an account on the website where sensitive information is obtained, such as user name and password. Such request for sensitive information on a site which the Complainant does not control is not only a security threat, but can also cause bad will if the information obtained is used in a manner which does not rhyme with the Complainant's security measures. See H & M Hennes & Mauritz AB v. Donnie Lewis, WIPO Case No. D2017-0580,where the respondent in that case also sold counterfeit products. The panel held that such use of the domain name in that case did not constitute any rights or legitimate interests in the domain name. The same reasoning is applicable in the present case.

Two out of the nine websites are currently inactive. In the Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003, the panel established that the registration and passive holding of a domain name, which has no other legitimate use and clearly references the complainant's well-known registered trademark EASTPAK may constitute registration and use in bad faith. In the present case, it is clear that the Respondent has registered the disputed domain names in bad faith by intentionally adopting the Complainant's well-known registered trademark EASTPAK in violation of the Complainant's rights. Previous UDRP panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the disputed domain names without any active attempt to sell, or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith, but all the circumstances of each case must be examined to determine whether the Respondent is acting in bad faith.

The disputed domain names were registered and are being used in bad faith.

The Complainant's trademark EASTPAK was registered in China, where the Respondent is domiciled, prior to the registration of the disputed domain names.

Further, the Complainant started to use the EASTPAK trademark as early as 1952, and the Complainant's products are now distributed in 10 countries, through partners' stores in, for example, China, Korea. The active business presence of the Complainant indicates that it seems unlikely that the Respondent was not aware of the unlawful registration of the disputed domain names.

Searches conducted in trademark databases do not disclose that the Respondent has applied for or is the owner of a corresponding mark. Moreover, when searching on Google.com and Baidu.com for "eastpak", all the results retrieved are related to the Complainant. Evidence in support of this has been provided to the Panel.

The overall behavior by the Respondent indicates that the Respondent does not have any good faith intentions with the disputed domain names' registrations. In the present case, examples of what may be cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark that predates the registration of the disputed domain names and that the Respondent is not using the disputed domain names for any legitimate purpose.

Furthermore, research by the Complainant on the Respondent has revealed that the Respondent has registered additional domain names incorporating, amongst others, famous brands such as Kenzo (<kenzobuys.com>, <kenzosale.com>), MK Michael Kors (<mkbagonshops.com>, <mkhandbags.com>) and Salomon (<salomonshoess.com>). These websites appear to be official websites of these brands, by displaying their logotypes and purporting to be offering their products for sale. See Actelion Pharmaceuticals, Ltd. V. Miles Richey, Richey Fixnet, WIPO Case No. D2016-1612, in which, in similar circumstances, the panel held: "From this pattern, the Panel infers that the Respondent is capitalizing on well-known trademarks". Such, abusive registrations, including the present ones, by the Respondent do not, in the view of the Complainant, constitute good faith use of the disputed domain names.

To summarize: EASTAPK is a well-known registered trademark, including in China. It seems clear that the Respondent was aware of the rights the Complainant has in the trademark and the value of such trademark, at the time of the registrations of the disputed domain names. The Respondent could have easily made a search before registering the disputed domain names and would have quickly learned that the trademark EASTPAK is owned by the Complainant and that the Complainant has been using its trademark for many years.

Consequently, the Respondent should be considered to have registered and be using the disputed domain names in bad faith.

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant's contentions or take any part in these proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain names, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain names are 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 disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondents failed to file a response, the panels' decisions were based upon the complainants' reasonable assertions and evidence, as well as inferences drawn from the respondents' failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the panel must not decide in the complainant's favor solely based on the respondent's default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the domain name incorporates a complainant's registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain names incorporate the Complainant's registered trademark EASTPAK and make the disputed domain names confusingly similar to the Complainant's well-known registered trademark EASTPAK. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products marketed under its well-known registered trademark EASTPAK.

The Panel agrees with the Complainant's contention that the addition to the disputed domain names of suffixes, such as "bags", "sale" and "buy", which are descriptive of the Complainant's goods, are not a distinguishing element, and are, therefore, irrelevant and do not have the effect of avoiding any confusion, on the part of consumers, Internet Users and others seeking information about the Complainant and its products. See Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066.

Likewise, the addition of the gTLD ".com" to the disputed domain names does not constitute an element in the disputed domain names so as to avoid any confusing similarity for trademark purposes. The use is purely for Internet technical registration purposes. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, supra. See also Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.

In view of all the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant's well-known registered trademark EASTPAK, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has prior rights in and commercial use of the same.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the respondent has any rights or legitimate interests in respect of the disputed domain names (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether there is any evidence of the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;

- whether the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights;

- whether the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain names. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done so, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant's well-known registered trademark EASTPAK. In fact, in the view of the Panel, the adoption by the Respondent of domain names confusingly similar to the Complainant's well-known registered trademark EASTPAK, which the Panel considers, as asserted above by the Complainant, was not by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products. Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant's well-known registered trademark EASTPAK and also the valuable goodwill that the Complainant has established in this trademark through prior and lengthy commercial use, as evidenced above, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has been commonly known by the disputed domain names; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain names.

Therefore, for all the above reasons and those advanced above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

"(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [the respondent's] web site or location or of a product or service on [its] website or location."

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain names incorporating as a dominant part thereof the Complainant's well-known registered trademark EASTPAK, is trading unfairly on the Complainant's valuable goodwill established in such trademark.

Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that "consumers expect to find a company on the Internet at a domain name address comprised of the company's name or trademark". As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain names is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain names were registered and are being used in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant's contention that the Respondent did not register and use the disputed domain names by chance, but, as noted above, whilst being aware of the notoriety of the business activity of the Complainant in China and its well-known registered trademark EASTPAK and its prior and lengthy commercial use.

Also, the Panel finds that the Respondent's use of the disputed domain names, which has the effect of redirecting Internet users interested in the Complainant's services to its own website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use, but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd./ Mr.Cartwright, WIPO Case No. D2007-0267.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, as well as other arguments advanced by the Complainant in its contentions, as set out above, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.

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, <eastpakba.com>, <eastpakbags.com>, <eastpakn.com>, <eastpaknow.com>, <eastpaksa.com>, <eastpaksale.com>, <eastpaksbuy.com>, <eastpaks.com> and <eastpakss.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: September 16, 2017