O'Neill Brand S.à r.l v. Identity Protect Limited
Claim Number: FA1710001756360
Complainant: O'Neill Brand S.à r.l of Luxembourg, Luxembourg.
Complainant Representative:
Respondent: Identity Protect Limited of Hayes, GB.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: Spring Madison, LLC
Registrars: Mesh Digital Limited
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Richard W. Hill, as Examiner.
Complainant submitted: October 31, 2017
Commencement: November 1, 2017
Default Date: November 16, 2017
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant 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 documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
The registered domain name(s) is/are identical or confusingly similar to a word mark
Complainant has registered the mark O’NEILL throughout the world for, most notably, clothing and accessories. It is a world well-known surf, ski and casual brand that has been designing, manufacturing, marketing and selling quality apparels, accessories, and performance wear goods since 1952. Complainant’s designs are renowned for their sporty and trendy look and fit and are highly popular throughout the world. Complainant’s rights it its mark date back to at least 1980.
The disputed domain name was registered in 2017.
The Examiner finds that the disputed domain name is identical to the mark.
Registrant has no legitimate right or interest to the domain name
Registrant is not a licensee of Complainant, nor has Complainant authorized Registrant to register or use the O’NEILL marks or the disputed domain name. Neither O-NEILL nor the disputed domain name are part of Registrant’s name; Registrant is not commonly known by either of those names. The disputed domain name is not being used.
Thus the Examiner finds that Registrant has no right or interest to the disputed domain names.
The domain name(s) was/were registered and is being used in bad faith
The disputed domain name is not being used. According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In the present case, the trademark is famous. It is difficult to envisage any use of the disputed domain name that would not infringe Complainant’s rights, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
Further, there was no response and Registrant used a privacy service, thus concealing its identity.
Given these circumstances, the Examiner finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The Examiner finds that the disputed domain name was registered and is being used in bad faith
The Examiner finds that the Complaint was not brought in an abuse of this proceeding and that it did not contain material falsehoods.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
1. <oneill.email>
Richard W. Hill, Examiner
Dated: November 16, 2017
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