Oakley loses dispute over myfakeoakleysunglasses.com at NAF

Oakley Inc. filed a complaint at the National Arbitration Forum (NAF) over  myfakeoakleysunglasses.com and surprisingly the complaint was denied by a sole Panelist.

The Complaint was submitted to the National Arbitration Forum electronically on July 24, 2012 and Respondent failed to submit a Response in this proceeding.

Although Panelist found that the 2 elements “Rights or Legitimate Interests” and “Registration and Use in Bad Faith” of the UDRP were satisfied, Panelist denied the complaint because element “Identical and/or Confusingly Similar” was NOT satisfied.

Complainant adequately established its rights in the OAKLEY mark by registering it with the United States Patent & Trademark Office (“USPTO”). Complainant submitted multiple trademark certificates bearing the OAKLEY mark, which all list Complainant as the owner of the registration. Therefore, the Panel concluded that Complainant had established rights in the OAKLEY mark under the first element of the UDRP.

Complainant asserted that Respondent’s myfakeoakleysunglasses.com domain name was confusingly similar to Complainant’s OAKLEY mark. Clearly, the addition of the descriptive word “sunglasses” did not adequately distinguish Respondent’s domain from Complainant’s mark. Complainant did not address the issue of whether the phrase “MyFake” to the beginning of the disputed domain name adequately differentiated the disputed domain from Complainant’s mark. This is probably because no cases have been decided that address this issue.

There have been three cases where the domain name included the word “replica” at the end of the domain name, all of which resulted in a finding the disputed domain name was confusingly similar to the related mark without much discussion, eLuxury.com Inc. v WangJunJie, FA1075554 (Nat. Arb. Forum Nov. 30, 2007), Louis Vuitton Malletier S.A., L.L.C. v Iani Derdena, FA1178961 (Nat. Arb. Forum May 29, 2008) and American Express Marketing & Development Corp. v BCR / John Hayes, FA1449262 (Nat. Arb. Forum July 21, 2012). The test under the UDRP is whether the domain name is “identical or confusingly similar”; not whether there is “confusion” nor whether the disputed domain name merely contains Complainant’s mark.

Complainant’s mark and the disputed domain name are not identical; they almost never are. This Panel did not see a confusing similarity between Complainant’s mark and the disputed domain name, see Homer TLC, Inc. v GreenPeople, FA550345 (Nat. Arb. Forum October 25, 2005). Everybody knows what the work “fake” means. The word “fake” appears before the trademark in the domain name. The web site makes it pretty clear these are counterfeit goods. People are going to this web site because they know it isn’t affiliated with Complainant. People are buying these good because the purchasers want to pretend they are Complainant’s goods. While it would seem obvious there is trademark infringement, that is not the test under the UDRP.

So the Panel found that the first element of the UDRP was NOT satisfied and the complaint for the domain myfakeoakleysunglasses.com was denied.

This was another good decision on the line with the consensus view that the UDRP was not created for companies to fight counterfeit goods or copies. Dyson was taught a hard lesson by loosing 2 UDRP complaints in a row.


About Konstantinos Zournas

I studied Computer Engineering and Computer Science in London, UK and I am now living in Athens, Greece. I went online in 1995, started coding in 1996 and began buying domain names and creating websites in 2000. I started the OnlineDomain.com blog in 2012.

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