The Complainant is OXYSALES, UAB, Lithuania, represented by Oxylabs legal department, Lithuania.
The Respondent is Proxy SP, United States of America / Yang Yi, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2020. On September 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day the Center sent an email communication regarding the identification of the Registrar. The Complainant filed amendments to the Complaint on September 21, 2020. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2020. The Center received the Respondent’s informal communications by email on October 10, 2020. Accordingly, the Center informed the Parties that it would proceed to panel appointment on October 12, 2020. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 3, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a proxy server provider based in Lithuania. The Complainant is the owner of the OXY and OXYLABS trademarks, among others: - OXYLABS, Israel trademark registration No. 311147, registered on October 3, 2019; In addition, the Complainant is the owner of the domain names The Disputed Domain Name The Complainant’s contentions can be summarized as follows: Identical or confusingly similar The Complainant states that the Disputed Domain Name is identical to its OXYLABS trademark, as it reproduces entirety, and is confusingly similar to its OXY trademark. In addition, the Complainant contends that the Disputed Domain Name is identical to its registered domain names. Rights and legitimate interest The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In addition, the Complainant has not licensed or authorized the Respondent to use its OXYLABS or OXY trademarks. The Complainant further alleges that the Respondent is not commonly known by the Disputed Domain Name. This is shown by the fact that the Respondent is hiding its identity behind a privacy service. Finally, the Disputed Domain Name redirects to a website of the Complainant’s competitor, in order to mislead consumers to its website. Registration and use in bad faith The Complainant contends that the Disputed Domain Name was registered and used in bad faith for the following reasons: To attract and direct Internet users to the website “www.luminati.io” which is a competitor of the Complainant and to disrupt the Complainant’s business. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, it stated that the Disputed Domain Name no longer redirected to the website ”www.luminati.io” and that their intentions are to use the Disputed Domain Name as an offline business, like T-shirts and shoes. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case: “(i) the domain name is identical or confusingly similar to a trademark or service mark in the 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.” A. Identical or Confusingly Similar Based on the evidence submitted, this Panel finds that the Disputed Domain Name Moreover, the addition of the Top-Level Domain (“TLD”) “.org” does not change this finding, since the TLD is generally disregarded in such an assessment of confusingly similarity. Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: “(i) before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.” There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the OXY and OXYLABS trademarks. In addition, in the correspondence with the Complainant, the Respondent recognized that the Disputed Domain Name redirected to the website “www.luminati.io” which is a competitor of the Complainant. As such, this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Complainant has used its trademarks before the Disputed Domain Name was registered. In light of this, the Respondent had evidently knowledge of the Complainant’s OXYLABS trademark when it registered the Disputed Domain Name. The fact that the Disputed Domain Name redirected to a website of the Complainant’s competitor is further evidence the prior knowledge of the Complainant’s trademarks. The Panel is of the view that the fact that the Disputed Domain Name currently does not redirect to a website of the Complainant’s competitor and it is intended to be used to sell t-shirts and shoes does not change the Respondent’s bad faith at the time of registration and use of the Disputed Domain Name. The Panel notes that this change of use occurred after the UDRP complaint was filed which is further evidence of bad faith. The circumstances in the case before the Panel indicates that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Name and it has intentionally created likelihood of confusion with the Complainant’s trademarks in order to attract Internet users for his own commercial gain. Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name Pablo A. Palazzi
- OXYLABS, European Union Trade Mark registration No. 017875311, registered on June 30, 2018; and
- OXYLABS, International trademark registration No. 1435242, registered on April 11, 2018.
Sole Panelist
Date: November 17, 2020
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