WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Desenio AB v. Domain Admin, Whois Privacy Corp
Case No. D2021-0852
1. The Parties
The Complainant is Desenio AB, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Domain Admin, Whois Privacy Corp, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <desenio.org> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2021. On March 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 2021, 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 March 25, 2021. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a further amended Complaint on March 26, 2021.
The Center verified that the Complaint together with the amended Complaints 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2021.
The Center appointed Carol Anne Been as the sole panelist in this matter on April 28, 2021. 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 contends it is a Swedish company selling posters, prints, frames and other wall art, which is active in over 30 countries. The Complainant first registered the DESENIO trademark on September 18, 2015, in Sweden with the registration no. 526769. The Complainant owns additional trademark registrations in several other jurisdictions.
The DESENIO trademark asserted by the Complainant is also the subject of trademark registrations in the European Union as of 2016 and 2017, one of which is the basis of International Registrations. The DESENIO trademark is also registered in Argentina, Brazil, Canada, Chile, Norway, Peru, Sweden, United Kingdom and Uruguay.
The disputed domain name <desenio.org> was registered on December 23, 2020. The disputed domain name is used to post links to third party sites with references to Canvas Prints Paintings, Art Design, Paintings, Wall Art Design, etc.
The Complainant sent a cease and desist letter to the Respondent on January 19, 2021, to which the Complainant did not receive a response. In follow-up communications to the Respondent, the Complainant asserted it had proof that Respondent offered the disputed domain for sale after receiving the cease and desist letter. The Complainant also did not receive a response to the follow-up communications.
5. Parties’ Contentions
The Complainant contends the disputed domain name is identical to its DESENIO mark with the addition of the top level domain “.org”, and thus is confusingly similar to the Complainant’s mark.
The Complainant contends the Respondent has no rights in the DESENIO mark, is not a licensee of the Complainant, and has no permission to use the mark as a domain name or to offer goods or services under the mark. The Complainant contends the Respondent uses the website at the disputed domain name to make connections to the Complainant’s goods and services by using the Complainant’s mark and providing information relating to the goods and services of Complainant and its competitors. The Complainant contends there is no evidence the Respondent is known by the disputed domain name or is making legitimate non-commercial or fair use of the disputed domain name. Thus, the Complainant contends the Respondent has no right or legitimate interest in the disputed domain name.
The Complainant contends its DESENIO mark was registered and used before the disputed domain name was registered, which implies the Respondent knew of the Complainant’s trademark and business when registering the disputed domain name. The Complainant also contends the use of the disputed domain name for a website with information about the goods and services of the Complainant and its competitors, misleads consumers to believe the Respondent is the owner of the mark, takes advantage of the good will in the Complainant’s mark, and draws consumers to the sites of the Complainant’s competitors for the profit of the Respondent. The Complainant thus submits that the Respondent registered and uses the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns trademark rights in the DESENIO trademark in Sweden and the European Union since 2015, and in a number of other jurisdictions. The Complainant’s registered rights in its mark predates the registration of the disputed domain name.
The disputed domain name uses the entire mark of the Complainant, the word DESENIO, with no additional elements, thus incorporating the Complainant’s mark in its entirety without modification. The only difference between the disputed domain name and the Complainant’s mark is found in the top level domain of the disputed domain name. Top level domains, such as “.org”, do not reduce the confusing similarity of a disputed domain name to a complainant’s mark, and may be disregarded in determining whether the disputed domain name is confusingly similar to a complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.11.
The Panel finds the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its mark as a domain name or to offer goods or services under the mark or to register any domain name incorporating its mark.
The Respondent does not appear to be known by the domain name or to have any rights in the DESENIO mark.
The Respondent uses the website at the disputed domain name to post links to third party sites with references to Canvas Prints Paintings, Art Design, Paintings, Wall Art Design, etc. The Complainant claims these links provide information relating to the competing goods and services of its competitors, which is not a legitimate noncommercial or fair use of the disputed domain name.
The Respondent had the opportunity to explain any claim to legitimate use of the disputed domain name, but did not respond to the Complaint. Therefore, the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted. WIPO Overview 3.0, Section 4.3.
The Panel finds the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s DESENIO mark was registered and used five years before the disputed domain name was registered. The Complainant uses its mark in more than 30 countries, suggesting wide recognition of the mark in connection with posters, prints, frames and other wall art. The disputed domain name using the Complainant’s mark provides links to competitors of the Complainant offering “Canvas Prints Paintings,” “Kids Wall Art,” “Art Print” and “Wall Art Design.” Thus, it is reasonable to infer the Respondent knew of the Complainant and its mark when the disputed domain name was registered.
The Respondent had the opportunity to respond to the Complaint, but failed to do so. The Respondent’s failure to rebut the case asserted by the Complainant indicates the lack of any other plausible explanation.
In the absence of a response, the Panel concludes the Respondent was aware of the Complainant’s trademark and business when registering and using the disputed domain name. The Respondent thus has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Panel finds the Respondent registered and is using the disputed domain name in bad faith.
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 <desenio.org> be transferred to the Complainant.
Carol Anne Been
Date: May 10, 2021