Paragraph 4(a) of the Policy requires the Complainant to prove three elements in order to the transfer of the domain name:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights
Complainant demonstrates that it owns valid trademark rights in the “ATOMIC” sign.
The Panel recognises that Complainant’s trademark rights in the “ATOMIC” sign are established.
The Panel also agrees that the disputed domain name is confusingly similar to Complainant’s ATOMIC trademark. The addition of the term “BARATO” does not allow to dismiss the likelihood of confusion with the “ATOMIC” trademark (see ARCELORMITTAL (SA) v. acero, Case n° 102399 (CAC March 20, 2019) “As stated in WIPO Overview 3.0 “In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”).
Therefore, the Panel concludes that Complainant has satisfied Policy 4(a)(i).
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name
The rule is that Complainant shall provide a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, under Policy 4 (a)(ii).
This rule has been recognised throughout continuous case law, such as in LESAFFRE ET COMPAGNIE v. Tims Dozman, Case No. 102430 (CAC, April 2nd, 2019) where it has been held that ‘The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP (please see, for example, WIPO case no. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd.)’.
Complainant asserts that Respondent is not commonly known under the disputed domain name, and that Complainant has never granted Respondent an authorisation to use its trademark, nor to register the domain name.
What is more, Respondent did not provide a response to the Complaint. Previous Panels have held that such lack of response from the Respondent’s part was proof that Complainant and Respondent had no relation and that Respondent is not commonly known under the disputed domain name (See FILEHIPPO S.R.O. v. whois agent, Case No. 102279 (CAC January 31st, 2019), “In the absence of a response, the Panel accepts the Complainant's allegations as true that the Respondent has no authorization to use the Complainant’s trademarks in the disputed domain name. Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.”).
The Panel concludes that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, and has therefore satisfied Policy 4(a)(ii).
(iii) The disputed domain name has been registered and is being used in bad faith
Complainant argues that given the renown of its trademark “ATOMIC”, Respondent could not ignore Complainant’s prior rights when registering the disputed domain name and necessarily knew Complainant’s brand and its products.
Given the content configured on the domain name, reproducing Complainant’s trademarks and offering what appears to be Complainant’s products for sale at a lower price, it appears that the incorporation of the Complainant’s registered trademark was done for the sole purpose to mislead consumers into believing that the disputed domain name was somehow linked to Complainant and its trademarks.
In light of the above, the Panel considers that Respondent had Complainant’s trademarks and products in mind when registering the domain name and has therefore registered the domain name in bad faith, aiming at misleading Complainant’s consumers.
Furthermore, the use of the domain name to sell what appears to be Complainant’s products at lower prices while reproducing Complainant’s trademark and logo, all of the aforementioned without Complainant’s authorization, amounts to a bad faith use of the domain name.
The Panel thus considers that the disputed domain name has been registered and used in bad faith by Respondent within the meaning of Paragraph 4(a)(iii) of the Policy.
The Panel ultimately considers that:
Complainant holds trademark rights in the “ATOMIC” sign. The disputed domain name reproduces Complainant’s trademark and is therefore confusingly similar to Complainant’s trademark, the mere addition of the Spanish term “BARATO” being insufficient to avoid a likelihood of confusion.
Respondent failed to establish legitimate rights in the disputed domain name. Complainant has established that Respondent registered and uses the disputed domain name in bad faith.
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