Decision for dispute CAC-UDRP-104909

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of many « O’NEILL » registered trademarks, including the following: International trademark O’NEILL (word) registration No. 1014984, registered on June 3, 2009; International trademark O’NEILL (device) registration No. 1061054, registered on February 19, 2010; European Union trademark O’NEILL (word) registration No. 008499782, registered on May 17, 2010.

The Complainant is Sisco Textiles N.V., owner of the O'NEILL trademarks registered throughout the world, notably for clothing and accessories. O’NEILL is a renowned surf, ski and casual brand that has been designing, manufacturing, marketing, and selling quality apparels, accessories, and performance wear goods since 1952. The Complainant has granted worldwide exclusive license to Surf & Turf S.à r.l to license intellectual property rights regarding the O'Neill brand included but not limited to the trademarks, logos, copyright, trade names.

The disputed domain name was registered on April 18, 2025. It currently resolves to a website where purported O’NEILL-branded goods are offered for sale, and on which the Complainant’s O’NEILL trademark and logo, as well as copyrighted images, are displayed.

On November 10, 2025, the Complainant’s representatives sent a cease-and-desist letter to the Registrant, through the registrar, which remained unanswered.

COMPLAINANT:

The Complainant contends that:

1. The disputed domain name is confusingly similar to the Complainant's trademark.

The Complainant contends that the disputed domain name, which contains the O'NEILL trademark in its entirety, is confusingly similar to its distinctive " O'NEILL” trademark.

2. The Respondent does not have any rights or legitimate interest in the disputed domain name.

The Complainant contends that the Respondent is not commonly known by the disputed domain name and that the Respondent is not affiliated with or authorized by the Complainant in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and is not related to the Complainant’s business in any way. The Complainant does not carry out any activity for, nor has any business dealings with, the Respondent. The Complainant further affirms that the disputed domain name is used to impersonate the Complainant or at least to create the false impression of an affiliation with the Complainant, and that such conduct can never confer rights or legitimate interests on a Respondent.

3. The disputed domain name has been registered and is being used in bad faith.

The Complainant contends that, owing to the distinctiveness of the Complainant’s trademark, it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of the Complainant’s rights in the O’NEILL trademark. In addition, the Complainant contends that the Respondent is deliberately attempting to impersonate the Complainant in order to exploit the goodwill associated with the Complainant’s trademark and to intentionally mislead Internet users into purchasing purported O’NEILL-branded goods under the false belief that they are dealing with the Complainant. Furthermore, the Complainant asserts that the goods offered for sale on the Respondent’s website are counterfeit. 

 RESPONDENT:

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

A) Confusing similarity
The disputed domain name contains the Complainant’s registered trademark O’NEILL in its entirety with the addition of the term “nl”. This Panel agrees with the Complainant's and previous Panels' view, that the addition of a generic term associated to a trademark does not create a new or different right to the mark or diminish confusing similarity.

B) Lack of legitimate rights or interests

The disputed domain name is a distinctive, non-descriptive name. It is unlikely that the Respondent registered the disputed domain name without having the Complainant firmly in mind. The Respondent does not appear to engage in any legitimate non-commercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In fact, it appears that the Respondent has used the disputed domain name for an unauthorized website displaying the Complainant’s trademark and offering for sale purported O’NEILL-branded goods. The Panel thus notes that the composition and use of the disputed domain name create a likelihood of confusion as to the Respondent’s relationship with the Complainant (where there is none). The Complainant’s assertions that the Respondent is not commonly known by the disputed domain name and is not affiliated with nor authorized by the Complainant are sufficient to constitute a prima facie demonstration of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The burden of evidence therefore shifts to the Respondent to show, using tangible evidence, that it does have rights or legitimate interests in the disputed domain name. The Respondent has made no attempt to do so. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C) Registered and Used in Bad Faith
The Complainant gives sound bases for its contention that the disputed domain name was registered and has been used in bad faith. Firstly, owing to the distinctiveness of the Complainant's trademark, and the use of the disputed domain name to resolve to a website displaying the Complainant’s trademark and logo and offering for sale purported O’NEILL-branded goods, it is reasonable to infer that the Respondent registered the disputed domain name with full knowledge of the Complainant's trademark, and so the Panel finds on the balance of probabilities that the Respondent was aware of the Complainant’s trademarks when registering the disputed domain name. Secondly, the Panel accepts the Complainant’s unchallenged assertion that the Respondent registered the disputed domain name with the aim of creating a likelihood of confusion with the Complainant’s trademark. Finally, the Respondent has not responded to nor denied any of the assertions made by the Complainant in this proceeding.