The Complainants are ONO International Limited, British Virgin Islands, United Kingdom, together with Annoushka Limited, United Kingdom, represented by Lewis Silkin LLP, United Kingdom (unless indicated otherwise, both entities are referred to throughout this decision collectively as the “Complainant”).
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Olivia Bell, The Bell Sisters, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2021. On March 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2021, 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 March 29, 2021, 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 amendment to the Complaint on March 29, 2021. The Center verified that the Complaint together with the amendment 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 April 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2021. On April 6, 2021, the Center received an informal email communication sent from a different email address than the one disclosed by the Registrar. On April 22, 2021, the Center informed the Parties that it would proceed with panel appointment. The Center appointed Jane Seager as the sole panelist in this matter on May 4, 2021. 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 Established in 2007 by jewellery designer Annoushka Ducas together with her husband John Ayton, the Complainant, Annoushka Limited, is engaged in the manufacture and sale of fine jewellery. The Complainant, ONO International Limited, is the IP holding company for Annoushka Limited, and is the owner of, inter alia, the following trademarks: - United Kingdom Trademark Registration No. UK00904215596, ANNOUSHKA, registered on November 26, 2008; and - European Union Trade Mark No. 004215596, ANNOUSHKA, registered on November 26, 2008. The disputed domain name was registered on September 20, 2018. As recently as January 16, 2021, the disputed domain name resolved to a website titled “Anoushka Luxury”, which purported to offer jewellery for sale (the “Respondent’s website”). According to the Complaint, the Complainant conducted a search against the website source code and identified the business who operated the website at the disputed domain name. On February 2, 2021, the Complainant’s representatives sent a letter to the above business, putting it on notice of the Complainant’s rights, and requesting, inter alia, transfer of the disputed domain name. Shortly thereafter, the website at the disputed domain name was taken down. The Complainant did not receive any substantive reply to its letter of February 2, 2021. At the time of this decision, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant asserts rights in the ANNOUSHKA trademark. The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s ANNOUSHKA trademark. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent does not have any registered rights in trademarks that comprise part or all of the disputed domain name. The Complainant notes that prior to filing the Complaint, the disputed domain name resolved to a website that purported to offer jewellery products for sale. The Complainant submits that the advertisement and sale of jewellery products under the term “Anoushka” constitutes infringement of the Complainant’s registered trademarks. The Complainant submits that the Respondent is not commonly known by the disputed domain name. The Complainant further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent knew or should have known of the Complainant’s rights in the ANNOUSHKA trademark when registering the disputed domain name, several years after the Complainant’s registration of its trademarks. The Complainant submits that at the time that the Respondent registered the disputed domain name, the Complainant enjoyed international fame, having won or been shortlisted for a number of industry awards. The Complainant asserts that the Respondent has used the disputed domain name to resolve to a website selling jewellery in direct conflict with the Complainant’s core offering. The Complainant submits that the Respondent has used the disputed domain name in order to create a likelihood of confusion with the Complainant’s rights, for the Respondent’s financial benefit. The Complainant requests transfer of the disputed domain name. B. Respondent On April 6, 2021, the Center received an informal email communication sent from a different email address than the one disclosed by the Registrar. The sender of the email indicated that she did “some contractual work, on behalf of the company in question and do not have decision making authority, nor [is she] the correct contact”. Upon receipt of this email, the Center requested the Respondent to reply to the sender’s email via the Registrar-confirmed contact email to confirm its relationship with the sender of the email in the context of the current proceeding, or the sender of the email to clarify her relationship to the Respondent and disputed domain name, and to provide information sufficient to verify such relationship. No reply was received from the Respondent nor the sender of the above email. In any event, the Panel has considered the above email in issuing this decision. 6. Discussion and Findings 6.1. Procedural Matter: Consolidation of the Complainants As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1, in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. The Complainant, ONO International Limited, is the holding company of the Complainant, Annoushka Limited. The Panel accepts the Complainant’s contention that the Respondent’s registration and use of the disputed domain name has affected both entities in a similar manner, such that they have a common grievance with the Respondent. The Panel finds that it would be equitable and procedurally efficient to permit the consolidation. 6.2. Substantive Matters In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights in the trademark ANNOUSHKA, the registration details of which are provided in the factual background above. The disputed domain name comprises “anoushka” as its leading element, which differs from the Complainant’s ANNOUSHKA trademark in terms of the omission of one letter “n”, followed by the descriptive term “luxury”. The Panel finds that the term “anoushka” is both visually and phonetically similar to the Complainant’s ANNOUSHKA trademark, such that the Complainant’s trademark is recognizable in the disputed domain name; see WIPO Overview 3.0, section 1.7. The addition of the descriptive term “luxury” does not prevent a finding of confusing similarity; see WIPO Overview 3.0, section 1.8. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s ANNOUSHKA trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests As noted above, the disputed domain name has been used to resolve to a website that purported to offer jewellery for sale under the brand “Anoushka Luxury”. In light of the similarity between the disputed domain name and the Complainant’s trademark, as well as the goods offered for sale via the Respondent’s website, the Panel considers it more likely than not that the Respondent was aware of the Complainant’s rights in the ANNOUSHKA trademark, and sought to capitalize on the goodwill and reputation associated with the Complainant’s rights in its online retail offering. Such misleading use of the disputed domain name does not amount to a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. The underlying registrant of the disputed domain name is listed as “Olivia Bell, The Bell Sisters”, which bears no resemblance to the disputed domain name. There is no evidence of the Respondent having acquired rights in any trademarks corresponding to the disputed domain name. The Panel does not consider the Respondent’s use of the disputed domain name to be of a nature so as to give rise to a legitimate claim of being commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The Respondent’s prior use of the disputed domain name was clearly intended to be commercial in nature. The Respondent has not made any legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not come forward with a reply to the Complainant’s arguments, and has not produced any evidence to rebut the Complainant’s case. Nor did the email communication dated April 6, 2021 as mentioned above provide any substantive reply to the Complainant’s arguments. The Panel further notes that after the Complainant’s letter to the business who operated the website at the disputed domain name, the disputed domain name no longer resolves to any active website. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant’s registered rights in the ANNOUSHKA trademark predate the Respondent’s registration of the disputed domain name by approximately 10 years. The Complainant has provided evidence indicating that since its incorporation, the Complainant has established substantial reputation and goodwill in the luxury-goods sector. In light of the contents of the Respondent’s website, as described above, the Panel infers that the Respondent could not have reasonably ignored the existence of the Complainant’s rights in the ANNOUSHKA trademark, and nevertheless proceeded to register the disputed domain name, having no relationship with the Complainant or authorization to make use of its trademark or any variation thereof, with a view to capitalizing on the Complainant’s goodwill and reputation. The Panel finds that the disputed domain name was registered in bad faith. The Panel further finds that by creating a website offering for sale jewellery under a confusingly similar name to that of the Complainant, the Respondent has intentionally attempted to attract, for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products offered for sale therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The fact that the disputed domain name no longer resolves to an active website does not alter the Panel’s findings in this regard. The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of 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 name Jane Seager
Sole Panelist
Date: May 25, 2021
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