{
    "case_number": "CAC-UDRP-102363",
    "time_of_filling": "2019-02-20 09:14:51",
    "domain_names": [
        "salesoneill.com"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "O'Neill Brand S.à r.l"
    ],
    "complainant_representative": null,
    "respondent": [
        "Pan Chen"
    ],
    "respondent_representative": null,
    "factual_background": "Complainant is a United States company that is famous internationally for its brand of popular clothing. It has been in business since 1952. \r\n\r\nIt conducts its business by means of a series of trademarks for O’NEILL which are owned by Sisco Textiles N.V. but licensed to the Complainant pursuant to an exclusive licence. Those trademarks are more particularly described above and referred to collectively as “the O’NEIL trademark.”\r\n\r\nWithout any permission from the Complainant, the Respondent registered the disputed domain name <salesoneill.com> on July 12, 2018. The website to which the domain name resolves promotes products which have a very similar look and feel to genuine O’NEILL products. \r\n\r\nTo protect its rights, the Complainant has caused several infringement takedown notices to be sent to the different host providers of the disputed domain name but to no avail.\r\n\r\nThe Complainant has therefore filed this Complaint to obtain the transfer of the disputed domain name from the Respondent to itself.  \r\n\r\n",
    "other_legal_proceedings": "None of which the Panel is aware of. ",
    "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant has made the following contentions.\r\n\r\nThe disputed domain name is confusingly similar to the O’NEILL trademark. \r\n\r\nThat is so because it wholly incorporates the entirety of the mark. The Respondent has added the word “sales” before the trademark, but this is a generic word covering the sales activities of the Complainant which does not reduce, but emphasizes the confusing similarity, a view that has been regularly endorsed in many prior domain name decisions when a generic word has been included with a trademark in a domain name. \r\n\r\nAccordingly, consumers will assume that the domain name and the website, which openly displays goods described as “O’Neill”, are the official domain name and website of the Complainant. It is also well established that gTLDs such as “.com” are disregarded for the purposes on this comparison.\r\n\r\nAccordingly, the disputed domain name is confusingly similar to the O’NEILL Trademark.\r\n\r\nThe Respondent has no rights or legitimate interests in the disputed domain name.\r\n \r\nThe Complainant has never assigned, granted, licensed, sold, transferred or authorized the Respondent to register or use the O’NEILL trademark in a domain name or anywhere else. There is no relationship between the Complainant and the Respondent which might conceivably entitle the Respondent to use the O’NEILL trademark.\r\n\r\nThe Respondent has never used or made preparation to use the disputed domain name in connection with a bona fide offering of goods or services.\r\n\r\nThe Respondent uses the disputed domain name in relation to a website which falsely pretends to be associated to the O’NEILL Trademark.\r\n\r\nThe website resolving from the disputed domain name creates the false impression that it is an official website for the O’NEILL trademark. Such use of the disputed domain name is not bona fide because it attracts internet traffic by using a domain name which is confusingly similar to an established and well-known trademark, creating confusion amongst consumers.\r\n\r\nThe Respondent is using the domain name and the website to sell unauthorized O’Neill products. \r\n\r\nThe generation of revenue from the utilization of the use of the O’NEILL Trademark in this manner does not constitute a legitimate non-commercial use of the disputed domain name. \r\n\r\nThe disputed domain name appears to be designated to mislead Internet users into believing that the website to which the domain names resolve is operated or authorized by the Complainant, which it is not.\r\n\r\nThe disputed domain name was registered and has been used in bad faith. \r\n\r\nThe Respondent has registered the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademarks.\r\n\r\nThe Respondent must have known of the famous O’NEILL trademark at the time of registering the disputed domain name because it is well-known throughout the world and the subject of a large number of trademark registrations.\r\n\r\nIn addition, after several infringement takedown notices were sent to the Respondent from the host providers, the Respondent hosted the disputed domain name with another host provider, in order to continue its activities , which itself shows bad faith.\r\n\r\nAs a result, internet users are likely to believe that they have arrived at the official website of the Complainant as that is the clear impression given by the content of the website. \r\n\r\nThe Complainant therefore submits that the Respondent registered and has used the disputed domain name in bad faith.\r\n\r\n\r\nRESPONDENT:\r\n\r\nThe Respondent did not submit a Response in this proceeding.",
    "rights": "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).  ",
    "no_rights_or_legitimate_interests": "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).  ",
    "bad_faith": "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).  ",
    "procedural_factors": "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.",
    "decision": "Accepted",
    "panelists": [
        "The Hon. Neil Brown, QC"
    ],
    "date_of_panel_decision": "2019-04-10 00:00:00",
    "informal_english_translation": "The Complainant has established registered trademark rights on which it may rely in this proceeding. The Complainant has submitted that it has rights in the following registered trademarks:\r\n\r\n• International registration no. 572361, registered on May 31, 1991;\r\n• US registration no. 1339268, registered on June 4, 1985;\r\n• US registration no. 1069298, registered on July 12, 1977; \r\n• US registration no. 1183040, registered on December 22, 1981; \r\n• EUTM registration no. 008499782, registered on May 17, 2010. \r\n\r\n(collectively \" the O'NEILL trademark\").\r\n\r\nIt has produced documentary evidence of such registration of trademarks for \r\n\r\n• International registration no. 572361, registered on May 31, 1991; and\r\n• EUTM registration no. 008499782, registered on May 17, 2010. \r\n\r\nThe Panel accepts the evidence submitted by the Complainant and its submission that it has trademark rights in all of the trademarks constituting \"the O'NEILL trademark\".\r\n\r\nThe Complainant has also registered the domain name <oneill.com> which it uses in its business.  ",
    "decision_domains": {
        "SALESONEILL.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}