Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to succeed in the administrative proceeding:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
I. THE COMPLAINANT’S RIGHTS AND IDENTITY OR CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT'S MARK
The Complainant has established that it has rights in the DANIEL WELLINGTON Trademark since 2012.
In assessing identity or confusing similarity the Panel finds that the disputed domain name incorporates the entirety of the dominant and distinctive element of Complainant's trademark, namely the wording DANIEL WELLINGTON, and differs from it by merely adding the TLD “.shop”.
It is well established that the TLD is usually to be disregarded for the purpose of determination of identity or confusing similarity between the disputed domain name and the Complainant’s trademark as it is a technical requirement of the registration. The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to new gTLDs); the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element. The meaning of such TLD may however be relevant to Panel assessment of the second and third elements (see 1.11 WIPO Overview 3.0).
Hence, this Panel finds that the Complainant has proven the first element of the paragraph 4(a) of the Policy and the disputed domain name is confusingly similar to the Complainant's mark.
II. THE RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS TO THE DISPUTED DOMAIN NAME
It is a consensus view of UDRP Panels that the Complainant shall establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent (see 2.1 WIPO Overview 3.0: "[...] where a 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.")
The disputed domain name was registered with privacy registration service. The Respondent was identified by the registrar with the name Nguyen Duong Tung, an individual domiciled in Vietnam.
The Complainant has no relationship with the Respondent whatsoever.
The Respondent has never received any approval of the Complainant, expressed or implied, to use the Complainant's DANIEL WELLINGTON Trademark or to register the disputed domain name.
There is no evidence that the Respondent has been commonly known by the disputed domain name or has acquired any rights in a trademark or trade name corresponding to the disputed domain name.
The disputed domain name directs to a website which is a copycat version of the Complainant main website, displaying the Complainant's DANIEL WELLINGTON Trademark, images and products or services. Such use of the domain name is clearly not a legitimate non-commercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s mark.
Moreover, considered that the TLD chosen by the Respondent (.shop) is descriptive of or relates to goods or services, or other term associated with the Complainant, the Respondent’s selection of such TLD tends to support the finding that the Respondent obtained the domain name to take advantage of the Complainant’s mark and as such that the Respondent lacks rights or legitimate interests in the domain name (see also 2.14 WIPO Overview 3.0).
While the Complainant has established its prima facie case, the Respondent has not submitted a Response to the Complaint and, thus, has failed to invoke any of the circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name.
Therefore, the Panel is satisfied that the Complainant has met the second requirement of the paragraph 4(a) of the Policy and finds that the Respondent lacks rights or legitimate interests to the disputed domain name.
III. BAD FAITH REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME
The Complainant has sufficiently demonstrated to be owner of the DANIEL WELLINGTON Trademark, registered prior to the registration of the disputed domain name and valid also in the territory where the Respondent is located (Vietnam).
The Respondent registered the disputed domain name, incorporating in its entirety the dominant and distinctive element of the Complainant's mark (namely the wording DANIEL WELLINGTON). The addition of the TLD “.shop” (on one hand a technical requirement of the registration, on the other descriptive of or relates to the business of the Complainant) is not only insufficient to escape the finding of identity or confusing similarity between the disputed domain name and the Complainant’s mark, but, together with the website content, even enhances the risk of confusion.
Indeed, the domain name resolves to a website which is a copycat version of the Complainant's official site, displaying the Complainant's trademark, images, products or service. Thus, it is clear that the Respondent registered and has used the disputed domain name with actual knowledge of the Complainant, it business and its mark and the intention to exploit the good will built by the Complainant by diverting traffic away from the Complainant’s website.
Furthermore, the Respondent used a privacy service when registering the disputed domain name. Although the use of such service is not in and of itself an indication of bad faith, the circumstances and the manner in which such service is used may however impact a panel’s assessment of bad faith (see 3.6 WIPO Overview 3.0).
The Respondent has failed to submit a response or to provide any evidence of actual or contemplated good faith use.
Taken into account all circumstances of this case, the Panel finds that it is implausible that there is any legitimate purpose in the registration and use of the disputed domain names by the Respondent.
Thus, the Panel finds that the Complainant has discharged the burden of proof to show that the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
Consequently, the disputed domain name is to be transferred to the Complainant.
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