The Complainants are Border I.P. Limited (“Complainant 1”), United Kingdom and PrimaRP DMCC (“Complainant 2”, together the “Complainants”), United Arab Emirates, both represented by Dentons UK and Middle East LLP, United Kingdom.
The Respondent is New Ventures Services, Corp, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2021. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 December 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2022.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on January 26, 2022. 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 BackgroundComplainant 2 owns and operates a clothing business under and by reference to the brand name Viyella on an international basis. VIYELLA is a leading brand of men’s and women’s clothing since 1784. The ownership of this clothing business has changed over the years. Complainant 1 used to own certain intellectual rights in the Viyella brand and is still registered on various IPO registers as the recorded owner of these intellectual property rights.
The Complainants own trademark registrations in various jurisdictions, including the European Union trademark VIYELLA (Reg. No. 17882885, registered on August 2, 2018), the United Kingdom trademark VIYELLA (Reg. No. UK00003305019, registered on July 20, 2018) and the United States trademark VIYELLA (Reg. No. 74515, registered on July 20, 1909).
The disputed domain name was registered on October 26, 2021 and resolves to a website with pay-per-click links to clothing retailer websites and/or related websites. Further, the website at the disputed domain name displays a notice stating that the disputed domain name may be available for sale.
Prior to the registration of the disputed domain name by the Respondent, the disputed domain name had been registered by the Complainants for the benefit of the Viyella brand and resolved to a website of the Viyella brand.
5. Parties’ Contentions A. ComplainantsThe Complainants allege that they have satisfied all elements of the Policy, paragraph 4.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and FindingsOn the basis of the facts and evidence introduced by the Complainants, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
A. Identical or Confusingly SimilarThe Complainants have submitted sufficient evidence to demonstrate their registered rights in the VIYELLA trademark.
The VIYELLA trademark is wholly reproduced in the disputed domain name, along with the Top-Level Domain (“TLD”) “.com”. It has become a consensus view among UDRP panels that the applicable TLD in a domain name is a standard registration requirement and as such may be disregarded when assessing confusing similarity under the first element of the Policy.
Therefore, the Panel concludes that the disputed domain name is identical to the Complainants’ VIYELLA trademark.
The Complainants have thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThere are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainants contend that the Respondent is neither affiliated with the Complainants nor making any bona fide use of the disputed domain name.
The disputed domain name resolves to a website with pay-per-click links to retailer websites that sell products in connection with the Complainants’ business and trademark. The Complainants have credibly alleged that the Respondent uses the disputed domain name for generating revenue by offering PPC links which resolve to websites of the Complainants’ competitors. This cannot be considered as a bona fide offering of goods or services or a noncommercial use.
The Panel finds that the Complainants, having made out a prima facie case which remains unrebutted by the Respondent, have fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUnder the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainants’ trademark, it can be inferred that the Respondent was aware of the Complainants’ trademark when registering the disputed domain name.
The evidence and allegations submitted by the Complainants support a finding that the Respondent is using the disputed domain name in an attempt to attract Internet users to its website by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of its website for its own commercial benefit (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.5). Moreover, the website at the disputed domain name displays a notice stating that the disputed domain name may be available for sale. The Respondent therefore uses the disputed domain name in bad faith.
Accordingly, the Complainants have also fulfilled paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Tobias Zuberbühler
Sole Panelist
Date: February 7, 2022