DECISION

 

Sisco Textiles N.V. v. Client Care / Web Commerce Communications Limited / Paula Gloistein / Ashgoal Support

Claim Number: FA2305002044463

 

PARTIES

Complainant is Sisco Textiles N.V. (“Complainant”), represented by Benoît NASR of O’Neill Brand S.à r.l, Luxembourg.  Respondent is Client Care / Web Commerce Communications Limited / Paula Gloistein / Ashgoal Support (“Respondent”), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue is/are <oneill-es.com>, <oneillaustralia.com>, <oneillbelgie.com>, <oneill-canada.com>, <oneill-deutschland.com>, <oneill-france.com>, <oneillireland.com>, <oneillitalia.com>, <oneill-mexico.com>, <oneillnewzealand.com>, <oneill-argentina.com>, <oneillchile.com>, <oneillbudapest.com>, <oneillcolombia.com>, <oneilldublin.com>, <oneillmalaysia.com>, <oneilllondon.com>, <oneill-uk.com>, <oneill-nederland.com>, <oneill-peru.com>, <oneillphilippines.com>, <oneill-uruguay.com>, <oneill-usa.com>, <oneillportugal.com>, <oneillsingapore.com>, <oneilluae.com>, and <dutchoneill.com>, registered with 123-Reg Limited; Alibaba.Com Singapore E-Commerce Private Limited; Godaddy.Com, Llc.

 

PANEL

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 Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 15, 2023; Forum received payment on May 15, 2023.

 

On May 15, 2023, 123-Reg Limited; Alibaba.Com Singapore E-Commerce Private Limited; Godaddy.Com, Llc confirmed by e-mail to Forum that the <oneill-es.com>, <oneillaustralia.com>, <oneillbelgie.com>, <oneill-canada.com>, <oneill-deutschland.com>, <oneill-france.com>, <oneillireland.com>, <oneillitalia.com>, <oneill-mexico.com>, <oneillnewzealand.com>, <oneill-argentina.com>, <oneillchile.com>, <oneillbudapest.com>, <oneillcolombia.com>, <oneilldublin.com>, <oneillmalaysia.com>, <oneilllondon.com>, <oneill-uk.com>, <oneill-nederland.com>, <oneill-peru.com>, <oneillphilippines.com>, <oneill-uruguay.com>, <oneill-usa.com>, <oneillportugal.com>, <oneillsingapore.com>, <oneilluae.com>, <dutchoneill.com> domain names are registered with 123-Reg Limited; Alibaba.Com Singapore E-Commerce Private Limited; Godaddy.Com, Llc and that Respondent is the current registrant of the names.  123-Reg Limited; Alibaba.Com Singapore E-Commerce Private Limited; Godaddy.Com, Llc has verified that Respondent is bound by the 123-Reg Limited; Alibaba.Com Singapore E-Commerce Private Limited; Godaddy.Com, Llc 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 May 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 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-es.com, postmaster@oneillaustralia.com, postmaster@oneillbelgie.com, postmaster@oneill-canada.com, postmaster@oneill-deutschland.com, postmaster@oneill-france.com, postmaster@oneillireland.com, postmaster@oneillitalia.com, postmaster@oneill-mexico.com, postmaster@oneillnewzealand.com, postmaster@oneill-argentina.com, postmaster@oneillchile.com, postmaster@oneillbudapest.com, postmaster@oneillcolombia.com, postmaster@oneilldublin.com, postmaster@oneillmalaysia.com, postmaster@oneilllondon.com, postmaster@oneill-uk.com, postmaster@oneill-nederland.com, postmaster@oneill-peru.com, postmaster@oneillphilippines.com, postmaster@oneill-uruguay.com, postmaster@oneill-usa.com, postmaster@oneillportugal.com, postmaster@oneillsingapore.com, postmaster@oneilluae.com, postmaster@dutchoneill.com.  Also on May 19, 2023, the 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 June 14, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceeding, 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 and has established to the satisfaction of the Panel that the disputed domain names are similarly constructed as each domain name contains Complainant’s mark and adds a geographic reference. Additionally, the domain names are mostly registered with the same domain name registrar and several of the websites are substantially similar to each other, offering counterfeit products or versions of Complainant’s products.

 

The Panel therefore finds find the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The matter may therefore proceed on that basis. Respondents will be referred to in this decision as “Respondent”.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

 

Complainant, Sisco Textiles N.V., is a surf, ski, and casual brand. Complainant has rights in the O’NEILL mark through its registration with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,069,298, registered on July 12, 1977). See Compl. Annex 3. Respondent’s <oneill-es.com>, <oneillaustralia.com>, <oneillbelgie.com>, <oneill-canada.com>, <oneill-deutschland.com>, <oneill-france.com>, <oneillireland.com>, <oneillitalia.com>, <oneill-mexico.com>, <oneillnewzealand.com>, <oneill-argentina.com>, <oneillchile.com>, <oneillbudapest.com>, <oneillcolombia.com>, <oneilldublin.com>, <oneillmalaysia.com>, <oneilllondon.com>, <oneill-uk.com>, <oneill-nederland.com>, <oneill-peru.com>, <oneillphilippines.com>, <oneill-uruguay.com>, <oneill-usa.com>, <oneillportugal.com>, <oneillsingapore.com>, <oneilluae.com>, and <dutchoneill.com> domain names (“hereinafter referred to as the “Disputed Domain Names”) are identical or confusingly similar to Complainant’s O’NEILL mark as they incorporate the mark while adding geographic terms, some include a hyphen, and all of the domain names append the “.com” generic top-level domain (“gTLD”).

 

Respondent lacks rights and legitimate interests in the Disputed Domain Names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its O’NEILL mark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead either passes off as Complainant while creating a false sense of affiliation with Complainant or hosts an inactive or parked page.

 

Respondent registered and uses the Disputed Domain Names in bad faith. Respondent either passes off as Complainant while creating a false sense of affiliation with Complainant or it hosts a parked or inactive page. Additionally, Respondent failed to respond to Complainant’s cease-and-desist letter. Furthermore, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the O’NEILL mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

C. Additional Submissions

Since the commencement of this proceeding Forum has received two communications from Respondent or parties associated with Respondent. The first of them is dated May 23, 2023 and provides as follows.

 

“Ashgoal Ltd is a reseller for the 123 Reg registrar platform, the Oneill-es.com domain is parked (no active website) and held on behalf of our client Gary O’Neill, would you like his contact details?”

 

The second communication is dated June 9, 2023 and provides as follows: “Hi,

I’m a letterpress printmaker in the San Francisco Bay Area. I am part of the O’Neill domain dispute because I registered the domain dutchoneill.com to use for my printing business. The name comes from my grandfather (Dutch Gloistein) and my grandmother (Peggy O’Neill). I do not currently have a live site at this domain but would like to retain the name. There is no overlap whatsoever between my business and O’Neill surfwear.

Please advise how I should proceed. Thank you, Paula Gloistein”.

 

Complainant has had notice of the two communications.

 

Neither communication complies with the Rules relating to Responses. However, the Panel has decided in the exercise of its discretion to have regard to both communications and has done so.

 

Neither communication has the effect of disproving any of the submissions of Complainant or has any probative value in resolving this proceeding. In particular, it is incorrect to say, as the communication of May 23, 2023 submits, that “the Oneill-es.com domain is parked (no active website)…”.The Panel has tested the domain name and finds that it resolves to an apparently active website that is used by a company in Malta to sell air conditioners.

 

Nor is it correct to say, as the communication of June 9, 2023 submits, that there is no live site at <dutchoneill.com> and no overlap between the purported printing business and “O’Neil surfwear”. The Panel has tested the domain name and finds that it is used to promote casinos and English language sites. It appears that Respondent has also tested the domain name and it has adduced evidence showing that the domain name resolves to a webpage or promoting “ wetsuits” which clearly overlaps with surfwear.

 

Accordingly, neither communications can effect the outcome of this proceeding.

 

FINDINGS

1.    Complainant is a company in Curacao engaged in the provision of surf, ski, and casual brand products.

 

2.     Complainant has established its rights in the O’NEILL mark through its registration of the mark with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,069,298, registered on July 12, 1977).

 

3.     Respondent registered the disputed domain names on the following dates:

-       <oneill-es.com>: December 9, 2019.

-       <oneillaustralia.com>: February 20, 2023.

-       <oneillbelgie.com>: February 22, 2023.

-       <oneill-canada.com>: February 20, 2023.

-       <oneill-deutschland.com>: February 22, 2023.

-       <oneill-france.com>: February 22, 2023.

-       <oneillireland.com>: February 20, 2023.

-       <oneillitalia.com>: February 22, 2023.

-       <oneill-mexico.com>: February 22, 2023.

-       <oneillnewzealand.com>: February 20, 2023.

-       <oneill-argentina.com>: February 22, 2023.

-       <oneillchile.com>: February 22, 2023.

-       <oneillbudapest.com>: February 22, 2023.

-       <oneillcolombia.com>: February 22, 2023.

-       <oneilldublin.com>: February 20, 2023.

-       <oneillmalaysia.com>: February 20, 2023.

-       <oneilllondon.com>: February 20, 2023.

-       <oneill-uk.com>: February 20, 2023.

-       <oneill-nederland.com>: February 22, 2023.

-       <oneill-peru.com>: February 22, 2023.

-       <oneillphilippines.com>: February 20, 2023.

-       <oneill-uruguay.com>: February 22, 2023.

-       <oneill-usa.com>: February 20, 2023.

-       <oneillportugal.com>: February 22, 2023.

-       <oneillsingapore.com>: February 20, 2023.

-       <oneilluae.com>: February 20, 2023 and

-       <dutchoneill.com>: June 17, 2016. See WHOIS information.

 

4. Respondent has caused the disputed domain names to be used to pass itself off as Complainant while creating a false sense of affiliation with Complainant or to host an inactive or parked web page.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

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 O’NEILL mark through its registration of the mark with multiple trademark organizations including the USPTO (e.g. Reg. No. 1,069,298, registered on July 12, 1977). See Compl. Annex 3. Registration of a mark with multiple trademark organizations including the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). Since Complainant has registered its mark with multiple trademark organizations including the USPTO, 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 name is identical or confusingly similar to Complainant’s O’NEILL mark. Complainant argues that Respondent’s Disputed Domain Names are identical or confusingly similar to Complainant’s O’NEILL mark. Under Policy ¶ 4(a)(i), adding geographical terms and a hyphen with the “.com” gTLD is insufficient in differentiating the domain name from the mark. See 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).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Disputed Domain Names incorporate Complainant’s O’NEILL mark while adding the geographic terms or abbreviations “es” (meaning Spain), “australia”, “belgie” (meaning Belgium), “canada”, “deuschland”, “france”, “ireland”, “italia” (meaning Italy), “mexico”, “argentina”, “chile”, budapest”, “colombia”, “dublin”, “malaysia”, “london”, “uk” (meaning United Kingdom), “nederland”, “peru”, “philippines”, “uruguay”, “usa” (meaning United States of America), “portugal”, “singapore”, “uae” (meaning United Arab Emirates), and “dutch”. Additionally, some of the domain names add a hyphen and all of them append the “.com” gTLD. Therefore, the Panel finds that Respondent’s domain names are identical or confusingly similar to Complainant’s O’NEILL mark under Policy ¶ 4(a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

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 name 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)).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a) Respondent has chosen to take Complainant’s O’NEILL mark and to use it in its domain names, adding various geographic terms or abbreviations which do not negate the confusing similarity between the domain names and the trademark;

(b) Respondent registered the disputed domain names on the foregoing dates;

(c)  Respondent has caused the disputed domain names to be used to pass itself off as Complainant while creating a false sense of affiliation with Complainant or to host an inactive or parked web page;

(d) Respondent has engaged in these activities without the consent or approval of Complainant;

(e) Complainant argues that Respondent is not commonly known by the Disputed Domain Names, nor has Complainant authorized or licensed Respondent to use its O’NEILL mark in the disputed domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See 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)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information identifies Respondent as “Ashgoal Support / Web Commerce Communications Limited / Paula Gloistein.” See Registrar Verification Email. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);

 

(f) Complainant contends that Respondent is not using the Disputed Domain Names for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant while creating a false sense of affiliation and offering unauthorized versions of a complainant’s product is not a bona fide offering of goods or services, nor any noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products.  The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Additionally, under Policy ¶¶ 4(c)(i) and (iii), failing to make active use of the mark or hosting a parked page is not a bona fide offering of goods or services, nor any noncommercial or fair use. See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).” ).Complainant submits that some of its domain names display Complainant’s products and create a false sense of affiliation with Complainant. See Compl. Annex 4 pages 7, 11, 13-18, 20-26; see also Compl. Annex 9. Additionally, the remaining domain names fail to make active use of the domain names or host a parked page. See Compl. Annex 4 pages 1-6, 8-10, 12, 19, and 27. The Panel therefore finds that Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

All of these matters go to make out the prima facie case against Respondent.

 

As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

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 Disputed Domain Names in bad faith by using some of the domain names to pass itself off as Complainant while creating a false sense of affiliation with Complainant and using the other domain names to host a parked or inactive webpage. Under Policy ¶ 4(b)(iv), passing off as a complainant while creating a false sense of affiliation with complainant is evidence of bad faith registration and use. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) whereRespondent 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.”). Additionally, hosting a parked or inactive page is evidence of bad faith registration under Policy ¶ 4(b)(iv) or Policy ¶ 4(a)(iii). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”) The Panel recalls that some of the domain names display Complainant’s products and create a false sense of affiliation with Complainant. See Compl. Annex 4 pages 7, 11, 13-18, 20-26; see also Compl. Annex 9. Additionally, the remaining domain names fail to make active use of the domain names or host a parked page. See Compl. Annex 4 pages 1-6, 8-10, 12, 19, and 27. As the Panel agrees, it finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(b)(iv) and Policy ¶ 4(a)(iii).

 

Secondly, Complainant contends that Respondent registered and uses the Disputed Domain Names in bad faith by failing to respond to Complainant’s cease-and-desist letter. Under Policy ¶ 4(a)(iii), failing to respond to a cease-and-desist letter is evidence of bad faith registration and use. 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). Complainant provides a copy of its cease-and-desist letter, which Respondent failed to respond to. See Compl. Annex 5. Thus, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).

 

Thirdly, Complainant argues that Respondent registered the Disputed Domain Names with bad faith actual knowledge of Complainant’s rights in the O’NEILL mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established where a domain name displays a complainant’s mark and/or products. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). The Panel recalls that Respondent uses some of the disputed domain names to pass itself off as Complainant. See Compl. Annex 4 pages 7, 11, 13-18, 20-26; see also Compl. Annex 9. As the Panel agrees, it finds that Respondent had actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).

 

Fourthly, 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 O’NEILL mark and in view of the conduct that Respondent has engaged in when using the 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.

 

DECISION

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-es.com>, <oneillaustralia.com>, <oneillbelgie.com>, <oneill-canada.com>, <oneill-deutschland.com>, <oneill-france.com>, <oneillireland.com>, <oneillitalia.com>, <oneill-mexico.com>, <oneillnewzealand.com>, <oneill-argentina.com>, <oneillchile.com>, <oneillbudapest.com>, <oneillcolombia.com>, <oneilldublin.com>, <oneillmalaysia.com>, <oneilllondon.com>, <oneill-uk.com>, <oneill-nederland.com>, <oneill-peru.com>, <oneillphilippines.com>, <oneill-uruguay.com>, <oneill-usa.com>, <oneillportugal.com>, <oneillsingapore.com>, <oneilluae.com>, and <dutchoneill.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated:  June 19, 2023

 

 

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