WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ocean Pacific Apparel Corp. v. Spiral Matrix

Case No. D2006-0287

1. The Parties

The Complainant is Ocean Pacific Apparel Corp., New York, New York, United States of America, represented by Katten Muchin Rosenman LLP, New York, New York, United States of America.

The Respondent is Spiral Matrix, Eldoret, Kenya.

2. The Domain Names and Registrar

The disputed domain names <oceanpacificclothing.com> and <oceanpacificshoes.com> are registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2006. On March 8, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On March 8, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

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, and the proceedings commenced on March 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2006.

The Center appointed Mr. Debrett Gordon Lyons as the sole panelist in this matter on April 28, 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

The Complainant is a designer, manufacturer and retailer of clothing, swimwear and related accessories sold under the trademark OCEAN PACIFIC.

The trademark has been used continuously since its adoption in 1970, and the Complainant is the proprietor of at least 7 United States Federal trademark registrations, the earliest dating from October 1976.

The Complainant claims extensive use and promotion of the trademark resulting in acquired distinctiveness and secondary meaning, most recently by virtue its on-line presence at its <op.com> website.

The Respondent registered the disputed domain names on November 4, 2005.

Websites which use the disputed domain names direct internet users to advertising sites. The websites also carry a link indicating that the names are for sale.

On December 6, 2005, the Complainant sent the Respondent a cease and desist letter by first class post and by email. The Respondent did not reply. The hard copy letter was returned, undeliverable to the Respondent’s given address.

On January 24, 2006, the Complainant sought to purchase the domain names via the website link. The Respondent rejected the Complainant’s offer and so the Complaint was lodged.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to a mark in which it has rights, that the Respondent has no right or legitimate interest in the domain names and that the Respondent registered the names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:

(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.

Having considered the Complainant’s case and the available evidence, the Panel finds the following:

A. Identical or Confusingly Similar

The Panel has no hesitation in finding that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

Absent contest by the Respondent, the Panel accepts that the registered trademarks are valid and subsisting. The Panel also accepts the Complainant’s claim that the trademark has acquired a secondary significance and indicates the Complainant’s business. The Complainant therefore has rights in the trademark.

For the purpose of comparison of the domain names with the mark, the gTLD, “.com”, can be ignored as trivial and so there only remains the descriptive words “clothing” and “shoes” which are utterly descriptive of the Complainant’s goods and so do nothing to dispel an association with the Complainant and its trade mark.

Accordingly, the Panel finds that the Complainant has met the first requirement of the Policy.

B. Rights or Legitimate Interests

There is no suggestion that the Respondent is known by the name, “ocean pacific”.

There is no suggestion that the Respondent has made demonstrable preparations to use either of the domain names in connection with a bona fide offering of goods or services.

There is no suggestion that the Respondent is making legitimate noncommercial or fair use of the disputed domain names.

The Panel is of the opinion that the only argument which the Respondent might have relied upon, had it submitted a response, is that “ocean pacific” is somehow a generic geographical indicator. However, absent any evidence of that matter from the Respondent, and in the face of the fact that the accepted name of the relevant body of water is “pacific ocean”, the Panel finds that the Respondent has not discharged the burden of proof which fell to it : See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 .

The Panel therefore finds that the Complainant has satisfied what was required of it under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the circumstances which 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.

These sets of circumstances are not exhaustive and other instances of bad faith might be in evidence however what is noteworthy about paragraphs 4(b)(i) – (iv) is that they are all cases of both registration and use in bad faith. Other times, there will be evidence of use in bad faith or registration in bad faith and the panelist will need to find both since the requirements of paragraph 4(a)(iii) of the Policy are conjunctive.

It is therefore logical to first test the facts against these given circumstances.

The Panel is of the view that the use of the disputed domain names falls squarely within paragraph (iv) above. The intention of the website was, in the Complainant’s words, to intercept internet users and to misdirect them to advertising sites for commercial gain. The Panel agrees with that assessment. It did so by using a domain name confusingly similar with the Complainant’s trademark. The Panel accordingly finds both registration and use in bad faith.

In addition, the Panel finds that Respondent’s behavior falls within the circumstances described in paragraph 4(b)(i) of the Policy, set out above. The indications are that the Complainant made a reasonable offer of US$300 to purchase the disputed domain names, an amount consistent with, if not exceeding, the likely out-of-pocket costs normally connected with registering two domain names. The Respondent in its email letter to the Complainant dated January 25, 2006 indicated that an offer “substantially higher than the original offer” would be required to secure the names.

For the aforegoing reasons, the Panel holds that the disputed domain names were registered and used in bad faith and that the Complainant has satisfied the third and final element of the Policy.

7. Decision

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 names, <oceanpacificclothing.com> and <oceanpacificshoes.com> be transferred to the Complainant.

Debrett Lyons
Sole Panelist

Dated: May 8, 2006