The Complainant is ONEY BANK, France, represented by SafeBrands, France.
The Respondent is Xiao Long Lin, A La Si Jia, China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2020. On November 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 11, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 13, 2020. The Center verified that the Complaint together with the amended 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 November 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2020. The Center appointed William F. Hamilton as the sole panelist in this matter on December 9, 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 French company offering consumer credit, electronic payments, and payment card management. The Complainant is located in 10 countries, including China, and has a portfolio of 10 million customers. The Complainant has obtained numerous trademark registrations for the mark ONEY, including: - International Trademark Registration No. 865742, dated August 11, 2005; The Complainant has also obtained a trademark registration for the mark ONEY LIVE, as follows: - International Trademark Registration, No.1422137, dated February 28, 2018. The Complainant’s ONEY and ONEY LIVE marks are sometimes referred to herein collectively as the “Marks.” The Complainant owns and operates websites at the domain names The Respondent registered the disputed domain names on April 24, 2020. The disputed domain name The Complainant asserts the disputed domain names are confusingly similar to the Complainant’s Marks because the disputed names wholly incorporate the Complainant’s ONEY mark. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names because the Respondent has not conducted any bona fide business under the disputed domain names and the Complainant has never provided the Respondent with any authority or permission to use the Marks or the disputed domain names. The Complainant further asserts that the disputed domain names were registered and being used in bad faith to attract for commercial gain unsuspecting Internet users to its Chinese language pornographic websites thereby damaging the Complainant’s business and reputation. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain names are confusingly similar to the Complainant’s Marks. The Respondent deviously attached the Top-Level Domain (“TLD”) “.live” to the ONEY mark to create the disputed domain names which are confusingly similar to the Complainant’s Marks and virtually identical to the Complainants ONEY LIVE mark with the exception of the period punctuation (which is a technical requirement of the domain name system). A domain name which wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888. “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark … the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Finally, when compared to the Complainant’s ONEY mark, the TLD does not prevent a finding of confusing similarity. “The applicable Top-Level Domain in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview 3.0, section 1.11. The placement of the numeral “1” in the disputed domain names does not avoid a finding of confusing similarity. For example, the mere addition of a dictionary word to a complainant’s registered mark does not avoid confusing similarity. Arcelormittal (SA) v. Admin Contact, PrivateName Services Inc. / Juan Jose,WIPO Case No. D2019-0145 (addition of the word “acero”, which means “steel” in Spanish, does not prevent a finding of confusing similarity); see generally WIPO Overview 3.0, section 1.8. Similarly, the addition of a hyphen or numeral before the added dictionary word in the disputed domain name does not prevent a finding of confusingly similarity. Chernow Communications, Inc. v. Jonathan D. Kimball,WIPO Case No. D2000-0119 (addition of a hyphen does not avoid confusing similarity). The Complainant has met its burden under paragraph 4(a)(i) of the Policy B. Rights or Legitimate Interests The panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain names. The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain names or the Marks. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain names or is commonly known by the disputed domain names or the Marks. The Respondent’s actual name disclosed by the Registrar does not resemble the disputed domain names. Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049. The Respondent did not respond to the Complaint and has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain names. The Panel finds the disputed domain names were registered and used in bad faith to falsely lure and attract Internet users to the Respondent’s website for commercial gain thereby disrupting the Complainant’s business. It strains credulity to believe that the Respondent was unaware of the Complainant’s Marks and willy-nilly composed the disputed domain name by registering the Marks in conjunction with the gTLD “live.” The fact that both disputed domain names incorporate the Complainant’s Marks and are differentiated only by the addition of the numeral “1” further supports the conclusion of bad faith registration and use. An elementary Internet search would have disclosed the Complainant’s Marks which are sufficiently distinctive such that it is difficult to conceive of any use that the Respondent might make of the disputed domain names without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Finally, the Panel notes that the disputed domain names resolve to pornographic websites which could have a negative impact on the Complainant’s reputation and thus evidences bad faith registration and use.LEGO Juris A/S v/ Zhangming Li, WIPO Case No. D2020-2350; VIVENDI v. Guseva Svetlana, WIPO Case No. D2018-2631. The Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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 names William F. Hamilton
- International Trademark Registration No. 947985, dated July 11, 2007;
- International Trademark Registration No.1171086, dated May 3, 2013;
- International Trademark Registration No.1337835, dated October 17, 2016.
The Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Sole Panelist
Date: December 23, 2020
Full & Egal Universal Law Academy