The Complainant has provided clear, convincing and uncontested evidence that it has rights in the DANIEL WELLINGTON mark established by its ownership of the trademark and service mark registrations set out above. In addition, the Complainant has shown that it has established rights and goodwill in the mark through its extensive use in its watches business since it was founded in 2011 becoming one of the fastest growing brands in the industry with 4,9 million followers on Instagram.
The disputed domain name consists of only the Complainant’s DANIEL WELLINGTON mark in combination with the gTLD <.online> extension.
The Complainant’s DANIEL WELLINGTON mark is the only distinctive element in the disputed domain name as the gTLD <.online> extension may be ignored, because in the circumstances of this Complaint, on the balance of probabilities, it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the DANIEL WELLINGTON mark in which the Complainant has rights.
The Complainant has therefore succeeded in the first element of the test in Policy paragraph 4(a)(i)
The Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name because
- the disputed domain name incorporates a trademark which is not owned by the Respondent;
- the Respondent known by the name “Daniel Wellington”;
- the Respondent is not using the disputed domain name to make any bona fide offering of goods or services;
- the screen capture of the website to which the disputed domain name resolves which has been submitted in an annex to the Complaint shows that the purpose of the registration of the disputed domain name is to create the misapprehension that the website is endorsed by the Complainant and/or used by the Complainant to offers its watches for sale;
- the screen capture also shows that the disputed domain name resolves to a replica of the Complainant’s genuine website at <www.danielwellington.com>;
- the Respondent’s website incorporates elements of the Complainant’s branding, i.e., the Complainant’s trademark, and also offers for sale goods which Are highly similar to the products offered by the Complainant on its genuine website;
-the evidence shows therefore that the Respondent is using the disputed domain name with intent for commercial gain and misleadingly to divert consumers and such use is also intended to tarnish the trademark at hand;
- there is no evidence to suggest that Respondent bears any relationship to the trademark;
- the disputed domain name coupled with the content of the website to which it resolves have no other meaning than as a reference to the Complainant's name and trademarks; and
- there is no way in which the disputed domain name could be used legitimately under the current circumstances.
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests.
The Respondent has failed to discharge the burden of production in this proceeding. This Panel must therefore find that on the balance of probabilities, the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore succeeded in the second element of the test in Policy paragraph 4(a)(ii).
The Complainant has satisfied this Panel that on the balance of probabilities the disputed domain name was registered in bad faith because it is composed of the Complainant’s distinctive trademark in its entirety, with no other elements. DANIEL WELLINGTON is a distinctive mark and while it is not impossible that there are people known by that name, the use to which the Respondent has put the disputed domain name is the address of a website offering watches for sale so that on the balance of probabilities the registrant of the disputed domain name was aware of the Complainant, its name, mark, reputation, goodwill, and website, and the disputed domain name was chosen and registered. Therefore, on the balance of probabilities, the disputed domain name was registered in bad faith with the Complainant's mark in mind with the intention of taking predatory advantage of the Complainant, and its goodwill.
Additionally, the Complainant has satisfied this Panel that on the balance of probabilities the disputed domain name is being used in bad faith because the uncontested evidence indicates that the disputed domain name is being used by the Respondent as the address of a website on which the Respondent is purporting to create impression that the website, is associated in some way with the Complainant.
The unauthorized use of the Complainant’s mark in the disputed domain name itself and on the website to which it resolves, proves on the balance of probabilities that the Respondent is using the disputed domain name in bad faith by engaging in an intentional attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith. The Complainant has therefore succeeded in the third and final element of the test in Policy paragraph 4(a)(iii) and is entitled to succeed in its application for transfer of the disputed domain name.
|