Decision for dispute CAC-UDRP-100408

Community Trademark Reg. 001149871, reg. date 06/02/2003
Community Trademark Reg. No. 002967040, reg. date 02/05/2007
US Trademark Reg. 1935123, reg. date 14/11/1995
US Trademark Reg. No. 3090429, reg. date 9'/5/2006
Canadian Trademark Reg. TMA280654, reg. date 26/3/1983
inter alia.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The disputed domain name contain Complainant's trademark ECCO in full. The addition of the generic terms SKO and NORGE does not preclude but even enhance the risk of confusion / likelihood of association with the Complainant’s trademark and company name. Therefore, the disputed domain name is confusingly similar to Complainant's trademark (Policy, Par. 4 (a)(1)).

Respondent has no rights in the trademark ECCO and is not a reseller/licensee of Complainant, use of the trademark ECCO by Respondent has never been authorized by Complainant. Accordingly, Respondent has no rights or legitimate interests in respect of the disputed domain name (policy, Par. 4 (a)(11)).

The fact that the Complainant’s trademark ECCO constitutes the dominant element of the disputed domain name, and that the Complainant’s logo and pictures are used by the Respondent without the rightful owner’s authorization constitute strong evidence of the fact that the Respondent is attempting to divert Internet users to his domain name by creating a likelihood of confusion with the Complainant’s trademarks, company name and domain names. The Respondent’s use of the trademark ECCO to sell counterfeit/fake ECCO shoes is a further evidence of the abusive registration and use of the disputed domain name.

For all these reasons, Complainant finds that the disputed domain name was registered and is used in bad faith (Policy, Par. 4(a)(iii)).

The following decisions support the case:

CAC:
Case No. 100357, ECCO-STOVLER.COM
Case No. 100259, ECCOSHOESSHOP.COM
Case No. 100278, ECCOSHOESUK.NET
Case No. 100311, UKECCOSHOES.NET
Case No. 100321, ECCOSKOUDSALG.COM
Case No. 100312, ECCOSALEONLINE.COM
Case No. 100305, ECCOONLINESALE.COM
Case No. 100327, ECCOONLINESALEUSA.COM

WIPO:
Case No. D2010-2038, ECCODISCOUNT.COM
(http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-2038)
Case No. D2010-1443, ECCOBRANDSHOP.COM, ECOOSHOP.COM
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1443)
Case No. D2010-1113, 51ECCO.COM
(http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-1113)
Case No. D2010-0650, ECCOSHOESOUTLET.COM, ECCOSHOESOUTLETS.COM, ECCOSHOESOUTLETS.NET
(http://www.wipo.int/amc/en/domains/decisions/text/2010/d2010-0650.html)

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy). The distinctive part of the domain named is the trademark "ECCO" held by the complainant. The Scandinavian word "sko" only relates to "shoes" while "Norge" is the term for "Norway". The average internet user might thus get the impression that the website of the respondent is commercially linked with the activities of the complainant.

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy). The respondent has refused to answer the complaint; therefore; there is no indication that his behaviour is justified.

The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy). The respondent uses the domain name in question for building up a platform selling fake shoes with the trademark of the complainant. He intentionally tries to attract users to his web site using the trademark of the complainant, even his logo and pictures are taken from the original website of the complainant. He uses privacy services to hide his identity. All these elements show that he has registered and is using the domain name in bad faith.

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The Respondent uses the trademark of the complainant for attracting internet users to his web site where he sells - with a secret identy - "fake" shoes resembling those produced by the complainant.