Decision for dispute CAC-UDRP-108520

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 NÜOBELL trademark in different jurisdictions around the world. As such, European Union Intellectual Property Office with registration number 018164853, registered on May 22, 2020 or, United States Patent and Trademark Office with registration number 7582828, registered on March 12, 2024.

The Complainant is a Swedish company doing business in the sport area with high-tech solutions such as OMNIGYM or FLEXBELL which were later in 2020 rebranded as NÜOBELL. The trademark has received attention from the trade press such as Fitness, Men’s Health, Gear Patrol. The Complainant´s official site is https://nuoathletics.com/.

The disputed domain name <nuobell.com> was registered on December 10, 2020 by the Respondent. At the moment of the file of this Complaint the disputed domain name redirected to the Respondent´s site: www.urbnfyt.com where both the Complainant´s and third parties´ products are for sale.

The Respondent´s site does not accurately and prominently disclose the registrant’s relationship with the Complainant. However, the Respondent has been listed as an official reseller of the Complainant for some time. Currently the Respondent is not listed as such.

THE COMPLAINANT 

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

The Complainant alleges that the Respondent incorporates the NÜOBELL mark in its entirety in the disputed domain name. By erasing the diaeresis, that said, the two points above the vowel “u”, the trademark is recognizable in the disputed domain name as set out in WIPO Overview 3.0 section 1.7.

The Complainant supports a finding that the Respondent does not have any rights or legitimate interests in the disputed domain name as provided in Paragraph 4(c) of the Policy. Further, the Complainant submits that the Respondent does not comply with Oki Data test (WIPO Case No. 2001-0903, Oki Data Americas, Inc. v. ASD, Inc.).

The Complainant also notes that previous panels have found that a domain holder lacks rights or legitimate interests in cases involving a domain name identical to the Complainant’s trademark and thus carry a high risk of implied affiliation.

With regard to the third element, the Complainant contends that the Respondent had knowledge of its trademark and that he was aware he had no prior rights. Besides, the Complainant contends that the Respondent has intentionally attempted to attract Internet traffic, for commercial gain by creating a likelihood of confusion with the Complainant’s mark NÜOBELL by trying to create a link of association between the Complainant and the disputed domain name to promote his own website and products.

THE RESPONDENT

The Respondent does not dispute the Complainant´s NÜOBELL trademark rights. However, the Respondent highlights that this element alone is insufficient for the transfer sought by the Complainant.

The Respondent also alleges that he has clear rights and legitimate interest to hold the disputed domain name. Namely, the site offers primarily genuine NÜOBELL products and the relationship is accurately disclosed (or can be made more explicit if needed). Thus, there is no false claim of being the manufacturer.

The registration of the disputed domain was in good faith. The Respondent states to be a reseller entering the Complainant´s product in the USA market. Accordingly, the Respondent denies being a cybersquatter or, attempting to sell the disputed domain name.

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.

1. Identical or Confusingly Similar

The Complainant has shown rights in respect of the NÜOBELL trademark for the purposes of the Policy. From a comparison between the disputed domain name and the Complainant´s trademark it seems clear that the latter is recognizable in the Respondent´s domain name. Indeed, this is a case of typosquating. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.  WIPO Overview 3.1, section 1.7.

The applicable Top Level Domain (‘TLD’) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element test.

The Panel finds the first element of the Policy has been established.

       2. Rights or Legitimate Interest

Paragraph 4(c) of the Policy sets out non-exclusive examples in which the Respondent may establish rights or legitimate interests in the disputed domain name. However, while the burden of proof in UDRP proceedings rests on a complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”. Accordingly, panels have established, since the inception of the UDRP, that it is sufficient to raise a prima facie case against the respondent and then the evidential burden of production shifts to the respondent. See CAC-UDRP-106452.

The Panel finds that the Respondent is selling the Complainant´s products but does not meet the Oki Data test. See WIPO Overview 3.1, section 2.8 where, among other requirements, the site must accurately and prominently disclose the registrant’s relationship with the trademark holder and, the Respondent must use the site to sell only the trademarked goods or services. According to the file, the Respondent is using the Complainant’s mark seeking commercial gain while not complying with the Oki Data test as noted above in the factual backgrounds.  Such use enhances the likelihood of confusion with the Complainant as to the origin or affiliation of the website at the dispute domain name and, therefore, no rights or legitimate interests are found in favour of the Respondent.

The Panel finds the second element of the Policy has been established.

3. Register and Used in Bad Faith

Noting that bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark, the Panel now looks at the third requirement of the test.

In the present case, the Panel finds that the Respondent knew or should have known about the Complainant and its trademarks when registering the disputed domain name <nuobell.com>. This previous knowledge is evident from the subsequent use in the corresponding site, selling the Complainant´s products.

Moreover, nothing in the file suggests that the Respondent received authorization to register the Complainant´s trademark as a domain name.

The Panel also notes that the Respondent is redirecting the disputed domain name to a different respondent-owned website where no accurate disclaimer is displayed. Thus, the Respondent is using the Complainant’s trademark as a domain name to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark and this falls in the circumstances depicted in paragraphs 4(b)(iv) of the Policy. 

The Panel finds that the Complainant has established the third element of the Policy.