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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

O'Neill Brand S.à r.l. v. Rebecca Wallace / Edith Drost / Tonya Bowers

Case No. D2018-0170

1. The Parties

The Complainant is O'Neill Brand S.à r.l. of Luxembourg, internally-represented.

The Respondent is Rebecca Wallace of Lexington, Kentucky, United States of America ("United States") / Edith Drost of Grand Rapids, Michigan, United States / Tonya Bowers of Dallas, Alabama, United States.

2. The Domain Names and Registrars

The disputed domain names <oneillswimwear.com> and <oneillbikini.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com. The disputed domain name <oneill-dresses.com> is registered with Web Werks India Pvt. Ltd (the "Registrars").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 26, 2018. On January 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 27, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that Rebecca Wallace is listed as the registrant of the <oneillswimwear.com> disputed domain name and that Edith Drost is listed as the registrant of the <oneillbikini.com> disputed domain name, and providing the contact details. On February 9, 2018, Web Werks India Pvt. Ltd transmitted by email to the Center its verification response confirming that Tonya Bowers is listed as the registrant of the <oneill-dresses.com> disputed domain name and providing the contact details.

On March 1, 2018 the Center sent an email to the Complainant noting that there appeared to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel's final determination of the consolidation request on appointment.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 23, 2018.

The Center appointed Steven A. Maier as the sole panelist in this matter on March 29, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Consolidation of Proceedings

The Complainant seeks to consolidate the proceedings against each of the three named registrants and contends that they should be treated as a single Respondent. As stated above, the Center accepted that there were prima facie grounds for consolidation subject to the final determination of the Panel. The criteria for consolidation of proceedings against multiple registrants are summarized in paragraph 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), which states that panels will consider whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. The Overview also sets out examples of factors which may indicate that domain names or websites are subject to common control.

In this case, having reviewed the Complainant's submissions and supporting evidence, the Panel accepts the following: that all three of the disputed domain names were registered within a relatively short period, between March and May 2017; that all three of the disputed domain names have a similar structure, namely, the term "oneill" followed by an item of clothing, i.e., "swimwear", "bikini" and "dresses"; that all three registrants have provided addresses supposedly within the United States which appear to be fictitious addresses; that all three of the disputed domain names have the same geographical IP location (Helsinki); that all three of the disputed domain names resolve to similar websites including similarly structured contact email addresses; and that all three of the registrant contact emails address appear to be hosted in China. In the light of these matters, and in the absence of any response from any of the three registrants disputing the Complainant's contentions, the Panel finds that (i) the disputed domain names and corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. The Panel determines therefore that the proceedings be consolidated and that the three named registrants be treated as a single Respondent.

5. Factual Background

The named Complainant is a company registered in Luxembourg. The Complainant provides evidence that it is appointed to represent another company, Sisco Textiles N.V. ("Sisco"), in trademark-related matters. Sisco is a company registered in Curacao. It is a manufacturer of apparel, accessories and
performance-wear goods under the brand name and trademark O'NEILL. Sisco is the owner of numerous registrations for the trademark O'NEILL in jurisdictions throughout the world, including (for example) International Trademark number 572361 for the mark O'NEILL, registered on May 31, 1991 for numerous classes of goods and services, including clothing in Class 25, and designating a total of 45 jurisdictions.

References to the Complainant in the remainder of this Decision are to the named Complainant and/or to Sisco as the context may indicate.

The disputed domain names were registered on the following dates:

<oneillswimwear.com> on March 6, 2017

<oneillbikini.com> on May 20, 2017

<oneill-dresses.com> on May 27, 2017

The Complainant has submitted evidence by way of screen-shots that each of the disputed domain names has been used for the purposes of a website which makes prominent use of the name O'NEILL and a logo and appears to offer items of clothing for sale.

6. Parties' Contentions

A. Complainant

The Complainant states that O'NEILL is a well-known brand throughout the world for surf, ski and casual clothing and that it has used the name and mark since 1952. It operates a website at "www.oneill.com" which includes images of its products. The website includes a stylized version of the O'NEILL name together with a logo.

The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights. It refers to its trademark O'NEILL and states that each of the disputed domain names comprises the whole of that trademark together with the generic terms "swimwear", "bikini" and "dresses" respectively. The Complainant contends that the addition of these terms does not distinguish the disputed domain name from the O'NEILL trademark, and that these additions in fact increase the possibility of confusion as they refer to the Complainant's core activities.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant states that it has never licensed on authorized the Respondent to use its O'NEILL trademark, that the Respondent has never been known by names corresponding to the disputed domain names and that the Respondent does not have any independent trademark rights in those names.

The Complainant submits that the Respondent is using each of the disputed domain names to resolve to a website which falsely gives the impression that it is an official website of the Complainant. The Complainant produces screen-shots of the Respondent's web pages, which make prominent use of the name O'NEILL together with a logo similar to that which appears on the Complainant's website. The Complainant contends that the Respondent's websites utilize images copied from the Complainant's own website and that the goods offered for sale on those websites are counterfeit. The Complainant states that it has made test purchases from the website linked to the disputed domain name <oneillswimwear.com> and that it received fake merchandise branded with the names of several well-known designers. The Complainant states that it is reasonable in the circumstances to conclude that the websites linked to the other two disputed domain names also offer counterfeit goods. The Complainant contends that the use of the disputed domain names for the purpose of misleading websites offering counterfeit merchandise cannot represent a bona fide offering of goods or services for the purposes of the Policy.

The Complainant submits that each of the disputed domain names was registered and is being used in bad faith. The Complainant repeats the factual contentions referred to above and contends that it is clear that the Respondent registered and has used the disputed domain names intentionally to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's trademarks.

The Complainant requests the transfer of each of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

7. Discussion and Findings

In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

Even in a case such as this where the Respondent has failed to file a Response, it is still necessary for the Complainant to demonstrate that each of the above elements is present.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of longstanding registered trademark rights in the brand name and mark O'NEILL in numerous jurisdictions. Each of the disputed domain names incorporates the term "oneill" together with a descriptive term, namely "swimwear", "bikini" and "-dresses" respectively. The Panel finds that none of these additions is effective to distinguish the respective disputed domain name from the Complainant's trademark, and accepts the Complainant's contention that the additions merely add to the likelihood of confusion by referencing types of goods for which the Complainant's trademark is registered. The Panel therefore finds that each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant's submissions set out above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names. However, the Respondent has not participated in this proceeding and has not, therefore, submitted any explanation for the registration and use of the disputed domain names, or evidence of rights or legitimate interests in any of the disputed domain names, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise.

The Panel accepts the Complainant's submissions and evidence that the Respondent registered and has used the disputed domain names for the purpose of misleading websites which falsely imply a commercial association with the Complainant. Such use of the disputed domain names cannot give rise to rights or legitimate interests for the purposes of the Policy, and there being no other evidence before the Panel of any such rights or legitimate interests, the Panel concludes that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant's evidence that the Respondent has used each of the disputed domain names for the purposes of a website which makes prominent use of the Complainant's trademark and logo, reproduces images taken from the Complainant's website and otherwise creates the false impression that it is operated or authorized by the Complainant. The Panel further notes that each of the disputed domain names reflects the Complainant's mark O'NEILL together with a descriptive term representing goods with which the Complainant is associated. The Panel readily infers in the circumstances that the Respondent registered each of the disputed domain names in the knowledge of the Complainant's trademark O'NEILL and with the intention of taking unfair commercial advantage of that mark. The Panel further finds that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites or of a product or service on its websites (paragraph 4(b)(iv) of the Policy). The Panel therefore concludes that each of the disputed domain names was registered and has been used in bad faith.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <oneillswimwear.com>, <oneillbikini.com> and <oneill-dresses.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: April 11, 2018

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