I would hereby like to tell my story regarding my relationship with Oakley Inc., a producer of sunglasses and apparel from the United States.
As a (former) big fan of the brand, and maybe one of their biggest fans here in The Netherlands, I wanted to do something for them. To make them more popular, boost their sales and above all, enable me to order products more easily since their service quality here in The Netherlands was below standards. If you wanted to order a product that wasn’t in stock in any of their Dutch shops, you would have to wait months for it. Just to know if it could be delivered would take 3-4 weeks as that was their response time to dealer questions.
So I wanted to make it better, for me and for anyone else that wanted to buy an Oakley product. And I started to develop a concept for an Oakley product web shop in cooperation with my local Oakley dealer who was very interested to deliver the products while I would provide the customers via the internet. It was a perfect concept and then I noticed that Oakley.nl wasn’t used yet. I investigated it further and noticed that almost all European oakley domains weren’t in use for/owned by Oakley Inc. so I expected that they weren’t interested in local European domains. And on top of that Oakley.be was in use for a web shop by a Belgian optometrist who sold Oakley products, so that ensured me that I would not get into trade mark trouble by buying Oakley.nl. Of course I knew/expected there was a certain risk, but I believed that Oakley was a “good” company. Friendlier than just any company, I thought. A brand of athletics and “fair” players, who care about people instead of making more money only.
So I purchased the domain Oakley.nl and wrote Oakley Inc. to request for authorization to use the domain for a web shop to sell Oakley products together with my Dutch Oakley dealer. I told them I was willing to invest 100.000 euro to develop one of the most state of the art web shops and to promote their products here in The Netherlands. However, if they would rather use the domain themselves, I would be willing to sell the domain to them for a low price.
They did not reply, so I asked my dealer to contact them and he did. But again, no reply.
As I wanted to do something with the domain, I first started a website for Annie Oakley. Oakley was my favorite brand, it was kind of my hobby so that is why I invested some time to develop a site for the domain that could be used until I reached some sort of agreement with Oakley Inc. After that I decided to setup a genealogy website for people with the surname Oakley, that provided background information about their name.
As of then, approximately 2 months after my first email to Oakley Inc. I thought they were simply slow to respond and didn’t suspect that Oakley was already monitoring the website and aware of my emails and faxes, and those of my dealer. After some while, I placed some Google ads on the genealogy website to see if it would work out. At first they showed genealogy ads so it seemed ok. After one day however, I noticed at some page loads it also included Oakley sunglasses ads so I removed the ads again. They have been on the site for a few days at most. Oakley made a screenshot of it and used it against me in their trail to claim the domain. They told the judge that those ads were on the site the whole time before I used the domain as company domain.
More months pass by since Oakley took the screenshot, and after several more emails and faxes from me I receive an email from an anonymous person that asked me if the domain Oakley.nl was for sale. I told them that I was planning to develop the domain but that I would be willing to sell it for a low price. I told him that I offered the domain to Oakley Inc. aswell for 50.000 euro but that the price I would be willing to sell for was really 25.000 euro. I did this because I wanted to provide Oakley Inc. with 50% off in case they would rather use the domain themselfs, so that they would win something by talking to me and get the domain for a low price. This person was secretly contacting my for Oakley Inc. and did not reply anymore after. They were simply seeking confirmation that I wanted to sell the domain, and they used this against me to make me look bad.
Some more months pass by and as Oakley did not seem to respond at all, I thought they simply were not interested in the domain so I decided to use the domain as company domain. The word Oakley means “area with a lot of Oak trees” and this is the environment in which I work, so it fitted perfectly. I changed my company name into Oakley Publishing and developed a website for it.
Then all of the sudden, a month later and after 8 months of not responding to me they started a attempt to claim the domain from me.
I felt it as a knife in the back. An attempt to steal from a loyal fan that only wanted to help them. Of course I did consider it a possibility that they had all the rights to do so, and that I made a mistake by buying a trademarked domain. So I sought advice from trade mark experts but they ensured me that Oakley would not likely win. They could only win if I would have used the domain in bad faith, or if I would use the domain for a service or company that is similar to the one that the trademark is registered for. In this case “sunglasses and apparel”. So I had nothing to worry about, according to them.
My friend, a trade mark owner himself, also told me I would likely win.
They did not know however, about the evil tricks Oakley was going to use to make me look bad so that they were able to obtain the domain from me. Oakley Inc. tried to make me look like a smart domain trader that only wanted to make a fast buck on behalf of their brand name. It felt so evil from them, because they really knew that they were not telling the truth. But not only that, they even suggested that I would have messed with documents that the I provided as proof of my attempts to contact them. They told the judge that they believed I changed the dates of the documents and suggested they never received those emails and faxes from me or my dealer. As if I committed fraud.
Oakley cheated, and that may have been the major reason they have won this case.
I would have never expected Oakley to do such a thing. I also don’t understand why they did this to me. I am really a good guy and have worked on several major non-profit projects in the past. That proofs I’m not in this for the money alone.
Cheating is bad, everybody knows this but Oakley provides lifestyle products and has fans so it is even worse to do these kind of things. They should know that some of those fans will be interested in local domains if Oakley wouldn’t do anything with them. And these kind of practices do hurt people. Why would you want this as a lifestyle company?
I wanted to share this story with you, so that you may be able to learn from it and if you happen to own a local Oakley domain. Beware of Oakley’s evil tricks to take it away from you. They cannot do so otherwise.