WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oasis Fashions Limited v. Marco Branco Varga
Case No. D2019-1470
1. The Parties
The Complainant is Oasis Fashions Limited, United Kingdom (“UK”), represented by Fieldfisher LLP, United Kingdom.
The Respondent is Marco Branco Varga, Germany.
2. The Domain Name and Registrar
The disputed domain name <oasis.clothing> is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2019. On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 June 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2019.
The Center appointed Mihaela Maravela as the sole panelist in this matter on July 24, 2019. 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. Factual Background
The Complainant is Oasis Fashions Limited, a woman’s fashion garments and clothing retailer, trading under the name OASIS for over 20 years. The Complainant uses the OASIS trademark to sell woman’s clothing and fashion garments through its brick and mortar stores located in the UK and Ireland, and also through its website “www.oasis-stores.com” which targets the UK and Ireland, the European Union, Scandinavia, the Middle East, and South America.
The Complainant is the exclusive owner of a number of registered trademarks consisting of the word OASIS in various jurisdictions throughout the world, including the following:
- the UK Trademark for the word OASIS with registration number 00001247151, registered on July 29, 1985, for products in class 25,
- the European Union trademark for the word OASIS, with registration number 000206250, registered on April 25, 2007, for products in classes 3, 14, 18, 21, and 25.
The disputed domain name was registered on February 25, 2018, and, at the date of the Complaint, redirected to a website selling woman’s clothing with the name OASIS on the starting page. At the date of the decision, the disputed domain name redirects to another website “www.clother.uk” where it is stated that “we expand our webstore, please be patient”, and few limited information is added.
5. Parties’ Contentions
The Complainant argues that the word OASIS is not a word used in the ordinary English language in relation to woman’s fashion garments and clothing; rather the word is used by the Complainant to distinguish its business in the market. The disputed domain name is identical and/or confusingly similar to the registered trademarks owned by the Complainant.
The Complainant further argues that the Respondent is using the disputed domain name for the same purpose as the Complainant, namely the advertisement and sale of woman’s fashion garments and clothing and that such use is intended to divert consumers away from the Complainant by exploiting the registered trademarks which are associated with the Complainant in the relevant market.
In addition, the Complainant argues that the disputed domain name was registered and is being used in bad faith as the disputed domain name is identical with its trademarks and the business of the Respondent is, in all material respects, identical to that of the Complainant. The Respondent’s use of the disputed domain name is intended to capitalize on consumers’ mistakenly believing that it belongs to the Complainant. The Respondent website imitates the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Fundamental due process requirements must be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond. (See, e.g., paragraph 2(a), Rules).
Based on the methods employed to provide the Respondent with notice of the Complaint, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to submit a response is not due to any omission by the Center.
Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must establish that it has rights in a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
The Panel is satisfied that the Complainant has rights over the OASIS trademark.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights.
Numerous prior UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617.
Here the disputed domain name incorporates in its entirety the Complainant’s OASIS trademarks.
The generic Top-Level Domain (“gTLD”) “.clothing” is not relevant for the purpose of assessing identity or confusing similarity to the trademark.
This Panel concludes that the disputed domain name is identical to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case, the Complainant has established a prima facie case that it holds rights over the trademark OASIS and claims that the Respondent has no rights or legitimate interests in the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “oasis”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Virgin Enterprises Limited v. Name Redacted, WIPO Case No. D2018-0970. The undisputed record shows that the disputed domain name was used at the date of the Complaint to sell products similar to those of the Complainant, under the name OASIS, and the relationship or lack of a relationship with the Complainant was not disclosed on the website, which does not vest the Respondent with legitimate interests in the disputed domain name.
Generally, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation and its use would not be considered “fair” (see WIPO Overview 3.0, section 2.5.1).
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the unrebutted assertions of the Complainant, its OASIS trademark was largely used in commerce well before the registration of the disputed domain name. The Panel therefore finds that the Respondent was in all likelihood aware of the Complainant and its rights in the term “oasis” at the registration of the disputed domain name. This conclusion is also supported by the fact that OASIS is a fanciful trademark, the disputed domain name is registered in a gTLD (“.clothing”) which expressly refers to the area of business the Complainant is active in, and also the Respondent was found not to have rights or legitimate interests in a name or trademark corresponding to the disputed domain name. Under these circumstances, the Panel finds that the Respondent has registered the disputed domain name having the Complainant’s trademark in mind. See for a similar solution Slide Mountain Acquisition Company LLC v. Simon Nissim, lipstick boutique, WIPO Case No. D2014-0393.
The website at the disputed domain name was used to redirect to a website offering similar products as those sold by the Complainant under the OASIS name. Under such circumstances, the Panel is of the view that the Respondent is likely attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of the Complainant as to the provision of products on that website (see paragraph 4(b)(iv) of the Policy).
The following factors were also considered by the Panel as indicative of bad faith registration and use of the disputed domain name: (i) the Respondent’s lack of response to the Complaint. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210; (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy; (iii) the apparent change of the content of the website to which the disputed domain name resolves after the receipt of the Complaint. The change to the Respondent’s website further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith), and V&V Supremo Foods, Inc. v. email@example.com, WIPO Case No. D2006-1373.
In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondents failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.
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 name <oasis.clothing> be transferred to the Complainant.
Date: August 7, 2019