Visor Commerce Limited v. Online Business Agency SRL / Online Business Agency
Claim Number: FA2108001960781
Complainant is Visor Commerce Limited (“Complainant”), represented by Field Seymour Parkes LLP (FAO Lewis Owen), International. Respondent is Online Business Agency SRL / Online Business Agency (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <onbuy.ro> and <onbuyromania.ro>, registered with ICI – Registrar.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 24, 2021; the Forum received payment on August 25, 2021. The Complainant was received in both English and Romanian.
On September 28, 2021, ICI – Registrar confirmed by e-mail to the Forum that the <onbuy.ro> and <onbuyromania.ro> domain names are registered with ICI – Registrar and that Respondent is the current registrant of the names. ICI – Registrar has verified that Respondent is bound by the ICI – Registrar registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 6, 2021, the Forum served the Romanian Complaint and all Annexes, including a Romanian and English language Written Notice of the Complaint, setting a deadline of October 26, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@onbuy.ro, postmaster@onbuyromania.ro. Also on October 6, 2021, the Romanian and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that registrants of the disputed domain names are the same entity as the name is the same except for the inclusion of “SRL,” which is merely a suffix for a registered European company. Additionally, Complainant contends the disputed domain names are identical in style and substance. Therefore, Complainant submits that “Online Business Agency SRL” and “Online Business Agency” are the same entity.
Having regard to all the circumstances , the Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The matter may therefore go forward on that basis.
PANEL NOTE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Romanian, thereby making the language of the proceedings to be Romanian.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Romanian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant made the following contentions.
Complainant, Visor Commerce Limited, is the registrant of <onbuy.com>, which is an online marketplace with over 35 million products sold by third-party sellers. Complainant asserts rights in the ONBUY mark based on registration with the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 012416681, registered Jan. 29, 2015). See Compl. Annex 1. Respondent’s <onbuy.ro> and <onbuyromania.ro> domain names are confusingly similar or identical to Complainant’s ONBUY mark.
Respondent does not have rights or legitimate interests in the <onbuy.ro> and <onbuyromania.ro> domain names. Respondent is not commonly known by the disputed domain names and Complainant has not permitted Respondent to use the ONBUY mark in any way. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain names to redirect users to its own competing websites.
Respondent registered and uses the <onbuy.ro> and <onbuyromania.ro> domain names in bad faith. Respondent uses the disputed domain names to attract users for commercial gain. Additionally, Respondent failed to respond to Complainant’s cease and desist notice.
B. Respondent
Respondent did not submit a Response to this proceeding.
1. Complainant is a United Kingdom company which operates a prominent online marketplace.
2. Complainant has established its trademark rights in the ONBUY mark based on registration of the mark with the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 012416681, registered Jan. 29, 2015).
3. Respondent registered the disputed domain names on February 17, 2018 and July 25, 2018.
4. Respondent uses the disputed domain names to redirect users to its own competing websites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ONBUY mark based on registration of the mark with the EUIPO (e.g., Reg. No. 012416681, registered Jan. 29, 2015). See Compl. Annex 1. Registration of a mark with the EUIPO is a valid showing of rights in a mark. See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (“Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the ONBUY mark with the EUIPO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ONBUY mark. Complainant argues that Respondent’s <onbuy.ro> and <onbuyromania.ro> domain names are confusingly similar or identical to Complainant’s ONBUY mark. The Panel notes that the addition of a geographic term and a country-code top-level domain (“ccTLD”) to a mark are insufficient to differentiate a disputed domain name from a mark. See Thomson Reuters Global Resources v. Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”); see also Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). Here, both domain names include the “.ro” ccTLD, which is for Romania, and the <onbuyromania.ro> domain name also adds the geographic word “romania.” Thus, the Panel finds that the disputed domain names are confusingly similar to the ONBUY mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s ONBUY trademark and to use it in its domain names, including in both cases the “.ro” ccTLD, which is for Romania, and in the case of the <onbuyromania.ro> domain name adding the geographic word “ romania”, neither of which negates the confusing similarity between the domain names and the trademark;
(b) Respondent registered the disputed domain names on February 17, 2018 and July 25, 2018;
(c) Respondent uses the disputed domain names to redirect users to its own competing websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent does not have rights or legitimate interests in the <onbuy.ro> and <onbuyromania.ro> domain names because Respondent is not commonly known by the disputed domain names and Complainant has not permitted Respondent to use the ONBUY mark in any way. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Additionally, lack of permission or authorization to use a mark constitutes a further showing that a respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, the WHOIS information of record identifies “Online Business Agency SRL / Online Business Agency” as the registrant of the domain names and no information suggests Complainant authorized Respondent to use the ONBUY mark in any way. See Registrar Verification Emails. Thus, the finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain names to redirect users to its own competing websites. Using a disputed domain name to divert Internet users to a respondent’s competing website does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots showing the disputed domain names resolve to websites offering products similar to those offered by Complainant at its legitimate website. See Compl. Annexes 2 & 4. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <onbuy.ro> and <onbuyromania.ro> domain names in bad faith because Respondent uses the disputed domain names to attract users for commercial gain. Under Policy ¶ 4(b)(iv), using a confusingly similar domain name to attract users to a respondent’s competing website is considered evidence of bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore, the Panel finds that a likelihood of confusion exists, that Respondent is attempting to benefit commercially from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). The Panel notes that Complainant provides screenshots showing Respondent uses the disputed domain names to offer products for sale similar to those offered by Complainant under the ONBUY mark. See Compl. Annex 4. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Secondly, Complainant contends that Respondent’s bad faith is evidenced by Respondent’s failure to respond to Complainant’s cease and desist notice. Under Policy ¶ 4(a)(iii), failure to respondent to a cease and desist notice may be evidence of bad faith. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Here, Complainant provides a copy of the cease and desist letter it sent Respondent and submits that Respondent did not reply. See Compl. Annex 6. Therefore, the Panel finds bad faith.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the ONBUY mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onbuy.ro> and <onbuyromania.ro> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 2, 2021
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