FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
About Complainant
Daniel Wellington AB (“Daniel Wellington”) was founded in 2011 by Filip Tysander. Since its inception, Daniel Wellington has established itself as one of the fastest growing and most beloved brands in the industry and is known for its sleek and minimalistic design. The preppy stylish watches have become a huge success and the marketing is not made through traditional marketing, but only through social media and its brand ambassadors. Today the brand Daniel Wellington has an astonishing 4,9 million followers on Instagram.
Recently Daniel Wellington launched a new modern take on a classic design, the Iconic Link. The new Iconic collection by Daniel Wellington continues the brand’s founding principles of creating timeless and elegant, yet expressive, pieces. Daniel Wellington has also been recognized and awarded by World Trademark Review for its work on enforcing and protecting its trademark rights and won the Europe, Middle East and Africa Team of the Year.
About Complainant’s rights in the name DANIEL WELLINGTON
The Complainant is the owner of the registered trademark DANIEL WELLINGTON as a word mark in numerous countries all over the world. See for example the International Trademark registration with registration no. 1135742 registered on July 3, 2012. The Complainant is also the owner of the International design mark with registration number 1260501 registered on March 3, 2015. These trademark registrations predate the disputed domain names registrations.
The Complainant has also significant presence on various social media platforms, such as Facebook, Youtube, Instagram, Pinterest and Twitter.
The Complainant has also registered several domain names, under various Top-Level Domains, containing the term “danielwellington” see for example, <danielwellington.com> (created on February 16, 2011) <danielwellington.asia> (created May 30, 2013).
A. Identical or confusingly similar
The disputed domain names incorporate the DANIEL WELLINGTON mark in its entirety. The addition of the generic words ‘verify’ and "acc" is insufficient to dispel the confusing similarity, for instance CAC Case No. 102797 BNP PARIBAS v. Julio Jaime concerning the domain name <bnp-paribas.pro> where the panel held that these additional elements are not enough to dispel a finding of confusing similarity between the disputed domain name and the trademark.
The addition of the generic Top-Level Domain (gtlds) “.com” and “.top” does not add any distinctiveness to the disputed domain names. Based on the foregoing, the Complainant has demonstrated that the disputed domain names are confusingly similar to its trademark. This is sufficient for a finding of confusing similarity for the purposes of the Policy; see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) as well as CAC Case No. 102348 Manifattura Mario Colombo & C. Spa v. Convey srl where this was reinforced.
B. Respondent has no rights or legitimate interests in respect of the disputed domain names
(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
First of all, there is no bona fide offering of goods or services since the disputed domain names incorporate a trademark which is not owned by the Respondent. Nor is the Respondent known by the name “Daniel Wellington”. The Respondent is currently masked for the second domain name. The purpose of the disputed domain names is to induce consumers into visiting a website under the misapprehension that the website is endorsed by Complainant where Complainant’s customer can enter serial number to verify their time pieces. Previously the websites had an identical layout but the <verifydanielwellingon.com> domain name has changed into a Pay Per Click website. The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the disputed domain names or to seek the registration of any domain name incorporating the DANIEL WELLINGTON mark. There is no evidence that the Respondent is commonly known by the disputed domain names or any similar name or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate, non-commercial use. In fact, on both websites the layout had the appearance of an official Daniel Wellington website whereby a customer could verify its serial number on the watch. The serial number is still requested on the “.top” website where the customer has to add the serial number to continue.
C. The disputed domain names were registered and are being used in bad faith
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Registered in bad faith:
Given the distinctive nature of the DANIEL WELLINTON mark, it is inconceivable that the Respondent registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s mark. Further, the Respondent could not have been unaware of the fact that it chose a domain name, which based on its composition could attract internet users in a manner that is likely to create confusion for such users. The Complainant has their own verification page under the official page https://verify.danielwellington.com/ It is evident that the disputed domain names are taking advantage of the official verification page.
As previously mentioned, the <verifydanielwellington.com> resolves to a Pay Per Click website at the moment with links to e.g. a competitor. There is nothing preventing the owner from re-activating the verify page at any time as the Respondent has ultimate control over the website.
To summarize, DANIEL WELLINGTON is a well-known trademark in the fashion industry. It is highly unlikely that Respondent was not at the point of the disputed domain names registrations aware of the rights the Complainant has in the trademark and the value of said trademark. The Respondent bears no relationship to the trademark and the disputed domain names coupled with the associated term ‘verify’ has no other meaning except for referring to Complainant's name and trademark and there is no way in which the disputed domain names could be used legitimately under the current circumstances. Consequently, the Respondent should be considered to have registered and to be using the disputed domain names in bad faith.
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