WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OrotonGroup (Australia) Pty Ltd v. Sibyl Winslow, eee.inc
Case No. D2020-0034
1. The Parties
The Complainant is OrotonGroup (Australia) Pty Ltd, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Sibyl Winslow, eee.inc, Afghanistan.
2. The Domain Name and Registrar
The disputed domain name <oroton.org> (the “Domain Name”) is registered with Todaynic.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2020. On January 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 20, 2020.
The Center verified that the Complaint together with the amended 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 January 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2020.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on February 26, 2020. 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 a design company founded in 1938 and it is today a well-established luxury brand. In the 1980s the company acquired the Polo Ralph Lauren license for Australia and New Zealand and became known as “OrotonGroup”. In 1987, the Complainant was listed on the Australian Stock Exchange. As at 2017, the revenue for the Complainant was at USD 123,205,000.
The Complainant runs 48 stores in Australia and many internationally. It employs around 500 employees worldwide in its retail stores, operations and management teams. The Complainant operates a website “www.oroton.com” that is accessible via various domain names including <oroton.com.au>. The Complainant controls several international domain names including <oroton.my>, <oroton.kr> and <oroton.cn>.
The Complainant owns numerous trademark registrations for the trade mark OROTON around the world, such as in China, Australia, New Zealand, the United Kingdom and the United States of America, for example: United States of America Trade Mark registration No. 4166183, registered on July 3, 2012.
The Respondent registered the Domain Name on November 29, 2019.
At the time of the Complaint, the Domain Name resolved to an active website that it replicated aspects of the Complainant’s official website. At the time of drafting the decision, the Domain Name redirects to an error web page.
5. Parties’ Contentions
The Complainant has documented trademark registrations in the trademark OROTON. According to the Complainant, the Domain Name is confusingly similar to the Complainant’s trademark.
The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name. To the Complainant’s knowledge, the Respondent does not own any rights in any trademarks, which comprise part or the entirety of the Domain Name, nor is the Respondent commonly known under this name.
Finally, the Complainant submits that the Respondent’s use of the Domain Name evidences both bad faith registration and use. The Domain Name resolved to a web page where many aspects of the Complainant’s official website were replicated, including the OROTON trademark. The Respondent has intentionally attempted to attract Internet users to an online location by creating a likelihood of confusion with the OROTON trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the trademark OROTON. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark in its entirety. For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.org”.
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There is no evidence suggesting that the Respondent has any rights or legitimate interests in the Domain Name. The Complainant has not granted any authorization to the Respondent. The Domain Name has redirected to a website that pretends to belong to or to be connected to the Complainant. Such use is not bona fide.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Based on the evidence, it is likely that the Respondent knew of the Complainant’s trademark and its business when the Respondent registered the Domain Name. The Respondent has intentionally attempted to attract Internet users to an online location by creating a likelihood of confusion with the OROTON trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <oroton.org> be transferred to the Complainant.
Date: March 11, 2020