Sisco Textiles N.V. v. guan men / yan li / 刚 邱 / Guitian Ma / Qicheng Wu / Xiuhai Zhou / Meng Qingyong / mei li
Claim Number: FA2302002032511
Complainant is Sisco Textiles N.V. (“Complainant”), represented by Benoît NASR of O’Neill Brand S.à r.l, Luxembourg. Respondent is guan men / yan li / 刚 邱 / Guitian Ma / Qicheng Wu / Xiuhai Zhou / Meng Qingyong / mei li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oneill-us.com>, <oneillsale.com>, <oneillstores.com>, <oneillwear.com>, <simplyoneill.com>, <clothingoneill.com>, <oneillsurfing.com>, <boardshortoneill.com>, <surfwearoneill.com>, (collectively “Domain Names”) registered with Name.com, Inc.; NameCheap, Inc.; Gname.com Pte. Ltd. (collectively “Registrars”).
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on February 20, 2023; Forum received payment on February 20, 2023.
On February 21, 2023 or February 22, 2023, the Registrars confirmed by e-mail to Forum that the<oneill-us.com>, <oneillsale.com>, <oneillstores.com>, <oneillwear.com>, <simplyoneill.com>, <clothingoneill.com>, <oneillsurfing.com>, <boardshortoneill.com>, <surfwearoneill.com> domain names are registered with them and that Respondent is the current registrant of the names. Each of the Registrars have verified that Respondent is bound by their registration agreements 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 February 28, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of March 20, 2023 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@oneill-us.com, postmaster@oneillsale.com, postmaster@oneillstores.com, postmaster@oneillwear.com, postmaster@simplyoneill.com, postmaster@clothingoneill.com, postmaster@oneillsurfing.com, postmaster@boardshortoneill.com, postmaster@surfwearoneill.com. Also on February 28, 2023, the Chinese and English 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 Respondent.
Complainant requests that the Domain Names be cancelled.
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 has provided detailed evidence of the connections between each of the Domain Names and in particular that: 1) the Domain Names are all similar variants of Complainant’s O’NEILL mark and add descriptive terms 2) The Domain Names were registered less than 4 months apart and share various combinations of Registrars and dates of registration 3) Seven of the 9 Domain Names resolve to similar websites (“Respondent’s Websites”) which feature similar design details, similar use of Complainant’s logo and terms and conditions; and 4) The two inactive domain names were registered on the same day as two of the active domain names and share a Registrar with three other domain names and have a similar naming pattern. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that multiple unconnected entities would register 9 very similar domain names over the course of a limited period with the same Registrars and point most of them to websites created with similar templates operating on an identical business model.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” for this Decision.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The language of the registration agreements for the Domain Names is Chinese. The Complaint is in English and Complainant requests that pursuant to UDRP Rule 11(a) the language of the proceeding be English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. The Respondent’s Websites are entirely in English. Furthermore, the Domain Names themselves contain various English words such as “sale” and “board short”. The Panel also notes the absence of any response by Respondent indicating a preference that the proceeding continue in Chinese. After considering the circumstances of the present case, the Panel decides that the proceeding should be continued in the English language.
A. Complainant
Complainant, Sisco Textiles, N.V., is the owner of the performance clothing and accessories brand, O’Neill. Complainant has rights in the O’NEILL mark through Complainant’s registration of the mark with multiple international government agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No.1,069,296, registered on July 12, 1977). Respondent’s <oneill-us.com>, <oneillsale.com>, <oneillstores.com>, <oneillwear.com>, <simplyoneill.com>, <clothingoneill.com>, <oneillsurfing.com>, <boardshortoneill.com> and <surfwearoneill.com> domain names are identical or confusingly similar to Complainant’s O’NEILL mark as they merely add a geographical term or a generic word and the “.com” generic top-level-domain ("gTLD") to the wholly incorporated mark.
Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, nor has Respondent been authorized by Complainant to use the O’NEILL mark. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services as Respondent passes off as Complainant by advertising counterfeit versions of Complainant’s products for sale on an unauthorized basis or holds the Domain Names inactively pending use for the purposes outlined above. Additionally, Respondent is using Complainant’s famous mark to confuse users and create an impression of association with Complainant.
Respondent registered and uses the Domain Names in bad faith. Respondent’s Websites disrupt Complainant’s business as Respondent uses the Domain Names to either pass off as Complainant while offering to sell counterfeit products or holds the Domain Names inactively pending use for such a purpose. Additionally, Respondent had actual knowledge of Complainant’s rights to the O’NEILL mark prior to registering the Domain Names based on the content of the Respondent’s Websites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the O’NEILL mark. Each of the Domain Names is confusingly similar to Complainant’s O’NEILL mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.
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”).
Complainant has rights in the O’NEILL mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No.1,069,296, registered on July 12, 1977). Registration of a mark with a nation’s trademark agency is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”).
The Panel finds that each of the Domain Names is confusingly similar to the O’NEILL mark as they each incorporate the portion of the O’NEILL mark that can be part of a domain name (the apostrophe not being able to be used as part of a domain name) while adding generic terms, in one case a hyphen and a gTLD. Adding a generic term, a hyphen and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the O’NEILL mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “guan men / yan li / 刚 邱 / Guitian Ma / Qicheng Wu / Xiuhai Zhou / Meng Qingyong / mei li” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names <oneill-us.com>, <oneillsale.com>, <oneillstores.com>, <oneillwear.com>, <simplyoneill.com>, <clothingoneill.com>, <oneillsurfing.com> (“Active Domain Names”) resolve or have resolved to the Respondent’s Websites which, through the reproduction of the O’NEILL Mark, Complainant’s logo and reference to Complainant’s products, pass themselves off as official websites of the Complainant for the purpose of selling unauthorized versions of Complainant’s goods, in direct competition with Complainant’s merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers unauthorized versions of a complainant’s goods does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum February 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Domain Names <boardshortoneill.com>, <surfwearoneill.com> (“Inactive Domain Names”) are presently inactive given that they resolve to pages with error messages. Passively holding a disputed domain name may suggest a lack of rights and legitimate interests in the domain name per Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Furthermore in the present case the Panel considers it likely that the Inactive Domain Names are being held pending use in a similar manner to the Active Domain Names.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (August-November 2022), Respondent had actual knowledge of Complainant’s O’NEILL mark since the Respondent’s Websites pass themselves off as official websites of the Complainant and as such reproduce material from Complainant and make repeated references to Complainant and its products. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register nine domain names that contain the O’NEILL mark and use seven of them (with the remaining domain names being inactively held) to redirect visitors to websites selling goods in direct competition with the Complainant under the O’NEILL mark other than to take advantage of Complainant’s reputation in the O’NEILL mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s O’NEILL mark for commercial gain by using the confusingly similar Active Domain Names (the Inactive Domain names likely being passively held pending similar use) to resolve to websites that, through the use of the O’NEILL mark and logo, mimic Complainant’s websites and offer unauthorized versions of Complainant’s products in direct competition with the Complainant’s products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oneill-us.com>, <oneillsale.com>, <oneillstores.com>, <oneillwear.com>, <simplyoneill.com>, <clothingoneill.com>, <oneillsurfing.com>, <boardshortoneill.com>, <surfwearoneill.com> domain names be CANCELLED.
Nicholas J.T. Smith, Panelist
Dated: March 30, 2023
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