Sisco Textiles N.V. v. Lbcsh Rvzio / Ssj Ssj / Ufafe Ufafe / Vhcyyu Hged / Bds Bds
Claim Number: FA2210002014749
Complainant is Sisco Textiles N.V. (“Complainant”), represented by Benoît NASR of O’Neill Brand S.à r.l, Luxembourg. Respondent is Lbcsh Rvzio / Ssj Ssj / Ufafe Ufafe / Vhcyyu Hged / Bds Bds, CN.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oneillsurf.me>, <soldesoneill.com>, <esoneill.store>, <froneill.store>, <itoneill.com> and <saldioneill.com> (“Disputed Domain Names”), all registered with Name.com, Inc. (“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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on October 5, 2022; Forum received payment on October 5, 2022.
On Oct 06, 2022, the Registrar confirmed by e-mail to Forum that the Disputed Domain Names are registered with it and that the respondents are the current registrants of the names. The Registrar verified that the respondents are bound by its registration agreement and have 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 11, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2022 by which the respondents could file Responses to the Complaint, via e-mail to all entities and persons listed on the respondents’ registration as technical, administrative, and billing contacts, and to postmaster@oneillsurf.me, postmaster@soldesoneill.com, postmaster@esoneill.store, postmaster@froneill.store, postmaster@itoneill.com, postmaster@saldioneill.com. Also on October 11, 2022, the Written Notices of the Complaint, notifying the respondents of the e-mail addresses served and the deadline for Responses, were transmitted to the respondents via post and fax, to all entities and persons listed on the respondents’ registrations as technical, administrative and billing contacts.
Having received no response from the respondents, Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from the respondents.
Complainant requests that the Disputed Domain Names be cancelled.
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.”
The Panel notes that the Disputed Domain Names are not registered to one holder. Paragraph 3(c) of 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.” The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there are reasonable submissions and evidence of a claim to actual control by one person or entity. This Panel follows that approach.
The Complaint provides ample support for the proposition that the Disputed Domain Names share a common owner. There is a constellation of commonalities which point to common ownership or control and the Panel determines that these Administrative Proceedings should continue against all of the named respondents (hereinafter, “Respondent”) and in respect of all the Disputed Domain Names.
A. Complainant
Complainant asserts trademark rights in O’NEILL and submits that the Disputed Domain Names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Names.
Complainant alleges that Respondent registered and used the Disputed Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant conducts an international business selling sportswear and sports accessories by reference to the trademark, O’NEILL, which is the subject of, inter alia, United States Patent & Trademark Office (“USPTO”) Reg. No. 1069298, registered July 12, 1977;
2. the Disputed Domain Names were all created decades after registration of the trademark and resolve to webpages which offer for sale sports clothing and swimwear and use the trademark and images taken from Complainant’s website; and
3. there is no association between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[i]. Complainant therefore has rights in O’NEILL since it provides proof of its registration of that trademark with the USPTO, a national trademark authority.
Complainant states that it:
“… respectfully recalls that a domain name which fully incorporate a trademark can be in itself confusingly similar. …In the present matter, the Complainant points out that the [Disputed] Domain Names all fully incorporate the [trademark]. They are therefore in themselves confusingly similar.”
An effort should be made by UDRP panelists to debunk this misleading proposition which reoccurs with distressing frequency. As explained many years ago in CHRISTIAN DIOR COUTURE v. Kianna Dior Productions, WIPO Case No. D2009-0353 (May 24, 2009):
“… the unqualified statement that confusing similarity exists if a disputed domain name completely incorporates the relevant trademark does not, without more, prove dispositive... . .. [T]he Complainant's trademark DIOR could be wholly incorporated in the hypothetical domain name <diorama.com>, however the word “diorama” has, in English at least, an independent dictionary meaning which dispels any confusion with DIOR. The trademark NIKE is incorporated within, for example, the domain name <nikethamide.com>, a drug used as a respiratory stimulant. In such cases, there may very well be no confusing similarity. … Added matter invites a contextual comparison on a case by case basis. Put simply, there is no authority to the blanket statement that if a trademark is wholly subsumed within a domain name there will always be confusing similarity.”
The Panel notes that Complainant goes on to state “it is well established that the addition of other terms (whether descriptive, geographical, or otherwise) would not prevent a finding of confusing similarity under the first element where the relevant trademark is recognizable within the disputed domain name.” However, from what then follows it appears that Complainant advances this as an alternative argument. It is not. Insofar as a broad statement of principle can be made, this Panel follows the many cases like Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) which have found confusing similarity where the disputed domain name contains complainant’s mark and differs only by the addition of a generic or descriptive word or phrase, together with the top-level domain.
For the purposes of comparison, the gTLD can either be disregarded since it is an essential part of any domain name, or in two particular cases, the gTLD, “.store”, can be seen as exacerbating the likelihood of confusion, given the nature of Complainant’s business. Thereafter, the Disputed Domain Names take the trademark to which they add either the common country name abbreviations for Spain, France and Italy, or descriptive terms such as “surf”, or “soldes” and “saldi” (corresponding with the word, “sale”, in English).
The additions are of no distinctive value and in each case the trademark remains the recognizable part of the domain name. As such, the Panel finds the Disputed Domain Names to be confusingly similar to the trademark[ii].
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iii].
The name of the underlying domain name holders, as disclosed by the Registrar, does not provide any indication that Respondent might be commonly known by any of the Disputed Domain Names.
There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark.
Complainant provides screenshots of the resolving websites which it presumes to display counterfeit goods since the sites reproduce images copied from the Complainant's website.
Whether or not the goods are counterfeit makes no difference since the Panel finds in either case that Respondent has no rights or legitimate interests in the Disputed Domain Names. Clearly the sale of counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under the Policy[iv]. Alternatively, the trademark has been used without permission and Respondent has not shown itself to be an authorized re-seller of Complainant’s branded goods[v].
The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy in respect of the Disputed Domain Names.
Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.
The Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. The resolving websites exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the names to attract, for commercial gain, internet users to its websites by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of those websites by implying to internet users that they will reach a location either operated by Complainant or someone affiliated with Complainant[vi].
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy in respect to the Disputed Domain Names, the Panel concludes that relief shall be GRANTED.
In accordance with Complainant’s request, it is Ordered that the Disputed Domain Names be CANCELLED.
Debrett G. Lyons, Panelist
Dated: November 20, 2022
[i] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).
[ii] See, for example, Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”; 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).”;
Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) finding <net2phone-europe.com> confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"; Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2014) ("...it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark."); The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶4(a)(i).”).
[iii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[iv] See, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”).
[v] See, for example, Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) finding no bona fide offering of goods or legitimate noncommercial or fair use existed where respondent used the resolving website to sell products branded with complainant’s MERRELL mark, which were either counterfeit products or legitimate products of complainant being resold without authorization.
[vi] See, for example, H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) determining that selling counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv).
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