Decision for dispute CAC-UDRP-108506

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 has provided evidence of its ownership of registered trademark rights in the trademark UYN registered in numerous jurisdictions:

• European Union Trademark No. 016950883, registered on November 6, 2017 in Classes 25 and 35;
• International Trademark No. 1384243, registered on October 19, 2017 in Classes 25 and 35.

The trademarks are still valid at present and their registration dates predate the registration date of the disputed domain name registered on March 2, 2024. The Complainant also owns a domain name <uynsports.com> registered on June 29, 2017, prior to the registration date of the disputed domain name.

A. Complainant's Factual Allegations

The Complainant is an Italian family-owned sports clothing company with over 70 years of history. For three generations, the Redini family has led the company with a strong focus on technology, innovation, and craftsmanship, establishing the Complainant as a recognized player in the field of technically advanced apparel and footwear, as evidenced by numerous awards and strong international sales. The UYN brand achieved a wholesale turnover of approximately EUR 30 million in 2022. Its functional underwear and technical apparel are widely recognized in the industry. Its UYN products are marketed and sold internationally.

B.  Respondent's Factual Allegations

The Respondent has defaulted in this UDRP administrative proceeding and has consequently made no factual allegations. The Respondent is cheng du yao jue xi ping mian she ji you xian gong si (ceng yao lin), based at the address of alabang okada, Manila, Post Code 0900, Philippines. The disputed domain name was registered on March 2, 2024 by the Respondent, as confirmed by the Registrar. It resolves to an active website. 

A. COMPLAINANT

The Complainant's contentions can be summarized as follows:

I. The disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights

The Complainant contends that it is the owner of the registered trademark UYN in numerous jurisdictions as mentioned above in the IDENTIFICATION OF RIGHTS. The disputed domain name is confusingly similar to the UYN trademark: i) it incorporates the Complainant's mark in its entirety together with the terms "sports" and "china"; ii) the disputed domain name differs from the Complainant's official domain name <uynsports.com> only by the addition of the geographical term "china". This further reinforces the likelihood of confusion, as Internet users may reasonably assume that the disputed domain name refers to a Chinese version branch, or market of the Complainant's official website; iii) the addition of the terms "sports" and "china” does not prevent a finding of confusing similarity. The term "sports" directly refers to the Complainant's field of activity, while the geographical term "china" is non-distinctive. 

II. The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the grounds: i) it failed to demonstrate its rights or legitimate interests in the disputed domain name; ii) the Complainant has no relationship with the Respondent. The Respondent has never been authorized to use the UYN trademark or to register or use the disputed domain name; iii) the Respondent has not been commonly known by the disputed domain name; iv) its use cannot constitute a bona fide offering of goods or services, nor does it amount to legitimate noncommercial or fair use.

Once the Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, paragraph 2.1. 

Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent's rights or legitimate interests in a domain name. However, the Respondent has failed to meet that burden. The Respondent did not submit any evidence to demonstrate any of the above circumstances.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven that the second element required by paragraph 4(a) of the Policy is established.

III. Bad Faith

The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith on the grounds: i) given the distinctive and invented nature of the UYN trademark, it is implausible that the Respondent selected the disputed domain name without awareness of the Complainant and its trademark; ii) the disputed domain name with the addition of the geographical term "china” is characteristic of cybersquatting whereby a respondent seeks to create the false impression of a regional or localized version of the Complainant's official website; iii) the disputed domain name resolves to a website of a Chinese company offering products entirely unrelated to the Complainant. The use of a domain name incorporating the Complainant's trademark to attract Internet users to an unrelated commercial website constitutes bad faith; iv) by using the disputed domain name in this manner, the Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

B. 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.

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the domain name; the complainant shall prove the following three elements:

(i) The 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 domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Based on the above regulations under the Policy, what the Panel needs to do is to find out whether each and all of the above-mentioned elements are established. If all three elements are established, the Panel will make a decision in favor of the Complainant. If the three elements are not established, the claims by the Complainant shall be rejected.

The Respondent did not submit a Response of any argument against what the Complainant claimed and to show his intention to retain the disputed domain name as required by the Policy and the Rules. If the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. In view of the situation, the Panel cannot help but make the decision based primarily upon the contentions and the accompanying exhibits by the Complainant except where there is an exhibit proving to the contrary.

 I. Identity or Confusing Similarity

Pursuant to Paragraph 4(a) (i) of the Policy, a complainant must prove that the domain name is identical with or confusingly similar to a trademark or service mark in which the complainant has rights.

A. Complainant has rights in a trademark or service mark

The Complainant has provided evidence of ownership of valid trademark registrations for the trademark UYN, registered in 2017 in numerous jurisdictions, as mentioned above in the IDENTIFICATION OF RIGHTS. The trademarks are still valid and their registration dates significantly predate the registration date of the disputed domain name, i.e. March 2, 2024. The Complainant therefore has rights in the trademark UYN.

 B. The disputed domain name should be identical or confusingly similar to the trademark or service mark

The disputed domain name contains the Complainant's trademark UYN in its entirety, together with the generic word “sports” and geographical name “china”. Numerous UDRP Panel decisions have established that the addition of words or letters to a trademark used in a domain name does not alter the fact that the domain name is confusingly similar to the trademark. WIPO Overview 3.0, paragraph 1.8 mentions: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

Paragraph 1.7 mentions: “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”.

The disputed domain name incorporates the Complainant's mark in its entirety together with the terms "sports" and "china". This further reinforces the likelihood of confusion. The term "sports" directly refers to the Complainant's field of activity. Internet users may reasonably assume that the disputed domain name refers to a Chinese version branch, or market of the Complainant's official website.

As to the generic Top Level Domain “.com”, it is viewed as a standard registration requirement and as such can be disregarded for the purpose of assessing identity or confusing similarity. See WIPO Overview 3.0, paragraph 1.11.1.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights according to paragraph 4(a) (i) of the Policy. Accordingly, the Complainant has proven that the first element required by paragraph 4(a) of the Policy is established.

II. Rights or Legitimate Interests of the Respondent

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name on the grounds: i) it failed to demonstrate its rights or legitimate interests in the disputed domain name; ii) it is not commonly known by the disputed domain name; iii) the Complainant has no relationship with the Respondent. It has never been authorized to use the UYN trademark or to register or use the disputed domain name. The disputed domain name with the addition term “sports” and "china" cannot confer any rights or legitimate interests on the Respondent; iv) such use cannot constitute a bona fide offering of goods or services, nor does it amount to legitimate noncommercial or fair use.

Once the Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, paragraph 2.1.

Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent's rights or legitimate interests in a domain name. However, the Respondent has failed to meet that burden. The Respondent did not submit any evidence to demonstrate any of the above circumstances.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven that the second element required by paragraph 4(a) of the Policy is established.

 III. Bad Faith

Paragraph 4(a) (iii) of the Policy provides that the domain name has been registered and is being used in bad faith.

A. The disputed domain name has been registered in bad faith

The Panel finds that the Respondent had knowledge of the Complainant's trademark at the time of registration of the disputed domain name, considering the following circumstances:

WIPO Overview 3.0, paragraph 3.2.2 mentions: "Noting the near instantaneous and global reach of the Internet and search engines and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark". The Panel believes that before registration of the disputed domain name the Respondent had made searches for the wording UYN and knew it was the trademark of the Complainant.

The Complainant contends that given the distinctive and invented nature of the UYN trademark, it is implausible that the Respondent selected the disputed domain name without awareness of the Complainant and its trademark. The disputed domain name with the addition of the terms “sports” and "china” is characteristic of cybersquatting whereby a respondent seeks to create the false impression of a regional or localized version of the Complainant's official website. This further supports the conclusion that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of taking unfair advantage of the Complainant's reputation. The Panel supports the Complainant’s contention.

In view of the above circumstances, the Panel holds that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. As the domain name would cause confusion to internet users, it should have avoided the registration, which is considered as good faith, rather it registered the disputed domain name. The Respondent deliberately sought to cause such confusion. Accordingly, the Panel finds that the disputed domain name has been registered in bad faith.

B. The disputed domain names is being used in bad faith

Paragraph 4(b) (iv) of the Policy states that the following circumstance in particular shall be evidence of registration and use of a domain name in bad faith: By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. According to the above paragraph 4(b) (iv) of the Policy, the Complainant contends that the disputed domain names are being used in bad faith. The Panel supports the Complainant’s contention, based on the following factors:

The disputed domain name resolves to a website of a Chinese company (Beijing Wenli Technology Co., Ltd.) offering products entirely unrelated to the Complainant. It exploits the Complainant's trademark to generate traffic. By using the disputed domain name in this manner, the Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website.

On the webpage, “About Us” mentions: “Beijing Wenli Technology Co., Ltd.（hereinafter referred to：Beijing Wenli）is a high-tech enterprise focusing on the design, development, production and sales of Fuel Cell (FC) systems and their components (BOP)”. It is clear that this website is for commercial gain.

Considering the above factors, the Panel finds that the disputed domain name is being used in bad faith.

Regarding the Complainant’s contention on bad faith, the Respondent should rebut it, but it did not make any response, which strengthened the Panel’s findings on its bad faith.

In view of all above, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to paragraph 4(a) (iii) of the Policy. Therefore, the Complainant has proven that the third element required by paragraph 4(a) of the Policy is established.

Decision

For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy and Rule 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.