Decision for dispute CAC-UDRP-108703

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

• the international trademark O’NEILL No. 1014984, registered on June 3, 2009; 
• the international trademark O’NEILL + WAVE (logo) No. 1061054, registered on February 19, 2010; 
• the international trademark WAVE (logo) No. 1061053, registered on February 19, 2010; 
• the United States trademark O’NEILL No. 1069298, registered on July 12, 1977; 
• the European Union trademark O’NEILL No. 008499782, registered on May 17, 2010; and 
• the European Union trademark O’NEILL + WAVE (logo) No. 008501141, registered on June 8, 2010. 

The Complainant, Sisco Textiles N.V., is the exclusive owner of the O’NEILL trademarks, registered throughout the world notably for clothing and accessories. O’NEILL is a worldwide-known surf, ski and casual brand which has been designing, manufacturing, marketing and selling quality apparel, accessories and performance wear since 1952.

The Complainant is the owner of the trademarks identified above. Apart from numerous physical stores around the world, O’NEILL-branded fashion products are also offered for sale online through websites operated by the Complainant’s licensees, such as <oneill.com>, <eu.oneill.com>, <us.oneill.com> and <au.oneill.com>.

The disputed domain name <oneiillsell.com> was registered on April 3, 2026 with the registrar Dynadot Inc. It resolves to a website which imitates the Complainant’s official website, reproduces the Complainant’s trademarks and logos, and offers for sale purported O’NEILL-branded products, using pictures taken from the Complainant’s website. On May 27, 2026, the Complainant addressed a cease-and-desist letter to the Respondent through the Registrar; the letter remained unanswered. 

The Respondent did not file a Response.

The Complainant contends that each of the three elements set out in paragraph 4(a) of the Policy is satisfied.

As to the first element, the Complainant submits that the disputed domain name is confusingly similar to its trademarks, as it reproduces that trademark in its entirety with the addition of (a) a duplicated letter “i” (yielding “oneiill” instead of “oneill”), (b) the generic term “sell”, and (c) the generic top-level domain “.com”. The Complainant contends that the generic top-level domain is not a distinguishing factor; that the addition of a descriptive or generic term does not avert a finding of confusing similarity, as it does not alter the overall impression that the designation is connected with the Complainant’s well-known trademark (referring to decision CAC-UDRP-104909); that the addition of the term “sell” is an aggravating factor, strongly suggesting the existence of an official Complainant’s retail outlet; and that the duplication of the letter “i” constitutes a deliberate, minimal misspelling easily overlooked by a casual Internet user, which does not overcome the confusing similarity with the trademark.

As to the second element, the Complainant submits that the Respondent has no connection or affiliation with the Complainant and has not received any licence or consent, express or implied, to use the Complainant’s  trademarks or to register any domain name incorporating them; that there is no evidence that the Respondent is commonly known by the name “oneiillsell” or uses that term in connection with a bona fide offering of goods or services; that, to the contrary, the disputed domain name resolves to a website which clones the Complainant’s official website, reproduces its trademarks and logos, and offers counterfeit products for sale; and that the use of a domain name for illegal activity – here, the sale of counterfeit goods – can never confer rights or legitimate interests on a respondent.

As to the third element, the Complainant submits that the disputed domain name was registered long after the Complainant’s trademarks, whose worldwide reputation has been established since 1952, so that it is inconceivable that the Respondent registered the disputed domain name without actual knowledge of the Complainant’s rights; that the website accessible via the disputed domain name displays the Complainant’s trademarks and logos and offers, or purports to offer, for sale O’NEILL-branded goods using pictures taken directly from the Complainant’s website, which constitutes a deliberate attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website within the meaning of paragraph 4(b)(iv) of the Policy; that the addition of the term “sell” evidences a deliberate commercial intent reinforcing the Respondent’s bad faith both at the time of registration and in use; and that the Respondent has maintained the disputed domain name despite the Complainant’s cease-and-desist letter, which remained unanswered, this being an additional indicator of bad faith.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is 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 Complaint was filed with the Czech Arbitration Court (the “CAC”) in accordance with the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”) and the CAC Supplemental Rules (the “Supplemental Rules”).

The CAC verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules. The CAC formally notified the Respondent of the Complaint and the proceedings commenced. The due date for a Response was duly set.

The Respondent did not submit any Response. Accordingly, the CAC notified the Respondent of its default. The Panel was appointed in accordance with the Rules. The Panel has submitted its Statement of Acceptance and Declaration of Impartiality and Independence, as required by the CAC to ensure compliance with the Rules.

The language of the proceedings is English.

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.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.

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

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights.

The Complainant has established, by the evidence on record, that it holds rights in the O’NEILL trademarks, in particular by virtue of the international, United States and European Union trademark registrations identified above, the earliest of which dates back to 1977. The Complainant has therefore satisfied the threshold requirement of having trademark rights for the purposes of paragraph 4(a)(i) of the Policy.

The disputed domain name <oneiillsell.com> incorporates the Complainant’s trademarks in a slightly misspelled form, the letter “i” being duplicated so as to yield the element “oneiill” instead of “oneill” (the apostrophe being incapable of reproduction in a domain name), followed by the generic term “sell” and the generic top-level domain “.com”. It is well established that a domain name which consists of a common, obvious or intentional misspelling of a trademark is considered to be confusingly similar to that trademark, where the trademark remains clearly recognisable within the domain name. Equally, the addition of a descriptive or generic term such as “sell” does not prevent a finding of confusing similarity, and the generic top-level domain is, as a rule, disregarded under the first element as a technical requirement of registration.

The Complainant’s trademarks remain clearly recognisable in the disputed domain name; the duplication of the letter “i” is a minimal alteration easily overlooked by a casual Internet user, and the addition of the term “sell”, far from dispelling confusion, reinforces the impression of an online sales outlet connected with the Complainant. 

The Panel accordingly finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and that the first element of paragraph 4(a) of the Policy is satisfied.

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

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In accordance with consistent UDRP practice, the burden of proof under this element rests upon the Complainant. However, given that proving a negative fact lying within the exclusive knowledge of the Respondent would entail an excessive evidentiary burden, it suffices for the Complainant to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is established, the burden of production shifts to the Respondent to demonstrate that it does possess rights or legitimate interests within the meaning of paragraph 4(c) of the Policy. If the Respondent fails to come forward with relevant allegations or evidence, the Complainant is generally deemed to have satisfied the second element.

In the present case, the Panel accepts, that:

• The Respondent is identified in the relevant WHOIS data as “to vddxe”, which bears no resemblance to the disputed domain name, and there is nothing on record to suggest that the Respondent is commonly known by the disputed domain name or by the name “oneiillsell”.
• The Respondent has no connection or affiliation with the Complainant and has not received any licence or consent, express or implied, to use the Complainant’s trademarks or to register any domain name incorporating them.
• The disputed domain name does not resolve to any genuine offering of goods or services or to any legitimate non-commercial or fair use. Instead, it resolves to a website which imitates the Complainant’s official website, reproduces the Complainant’s trademarks and logos, and offers for sale counterfeit O’NEILL-branded products using pictures taken from the Complainant’s website. The use of a domain name for illegal activity, such as the sale of counterfeit goods or the impersonation of a trademark owner, can never confer rights or legitimate interests on a respondent.

The Panel therefore finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent, having failed to file a Response, has not rebutted that prima facie case and has not put forward any of the circumstances set out in paragraph 4(c) of the Policy, or any other basis on which rights or legitimate interests might be founded.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the second element of paragraph 4(a) of the Policy is satisfied.

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

Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of registration and use in bad faith, including, in paragraph 4(b)(iv), circumstances indicating that the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or of a product or service on it.

As to registration in bad faith, the disputed domain name incorporates a minimally misspelled form of the Complainant’s O’NEILL trademarks, which had been registered and extensively used worldwide for decades before the registration of the disputed domain name, the reputation of the O’NEILL brand having been established since 1952. The composition of the disputed domain name – a deliberate misspelling of the trademark combined with the sales-related term “sell” – and the subsequent use of the disputed domain name for a website reproducing the Complainant’s trademarks, logos and product images leave no doubt that the Respondent had the Complainant and its trademarks firmly in mind when registering the disputed domain name. The Panel is therefore satisfied that the disputed domain name was registered in bad faith.

As to use in bad faith, the disputed domain name resolves to a website which imitates the Complainant’s official website, displays the Complainant’s trademarks and logos, and offers for sale purported O’NEILL-branded goods using pictures taken directly from the Complainant’s website. By such use, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website and of the products offered on it, within the meaning of paragraph 4(b)(iv) of the Policy. The addition of the term “sell” in the disputed domain name reinforces the false impression of an official O’NEILL online outlet and evidences the Respondent’s deliberate commercial intent. The Respondent’s failure to respond to the Complainant’s cease-and-desist letter, and its failure to file any Response or to provide any explanation of its conduct in these proceedings, are further indicators of bad faith.

Having regard to the distinctiveness and reputation of the Complainant’s trademarks, the confusing similarity between the disputed domain name and those trademarks, the use of the disputed domain name to impersonate the Complainant and to offer counterfeit goods for sale, the absence of any conceivable good-faith use, and the Respondent’s default, the Panel finds that the disputed domain name was registered and is being used in bad faith, and that the third element of paragraph 4(a) of the Policy is satisfied.

Conclusion

All three elements set out in paragraph 4(a) of the Policy having been established to the satisfaction of the Panel, the Panel concludes that the Complaint is well-founded. The Complainant has requested the revocation (cancellation) of the disputed domain name. Accordingly, the Panel orders that the disputed domain name <oneiillsell.com> be cancelled.