ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Oaklins Swiss Verein v. Mills Andres Case No. D2024-4141 1. The Parties The Complainant is Oaklins Swiss Verein, Switzerland, represented by Marks Gray, P.A., United States of America (“United States”). The Respondent is Mills Andres, United States 2. The Domain Name and Registrar The disputed domain name is registered with Hostinger Operations, UAB (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2024. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2024, 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 (Holder of the domain; Domain Admin, Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 15, 2024, 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 October 16, 2024. 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 October 21, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2024.
page 2 The Center appointed David Taylor as the sole panelist in this matter on November 21, 2024. 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 an association of international advisors that provides advice to individuals and businesses regarding raising capital, creating an acquisition plan, selling a company, and debt advisory. The Complainant is the registrant of trademark registrations for OAKLINS, including: - International Trademark Registration No. 1293053, OAKLINS, registered on January 17, 2016; and - United States Trademark Registration No. 5088956, OAKLINS, registered on November 29, 2016. The Complainant also owns the domain name , which resolves to a public-facing website promoting the Complainant’s business. The disputed domain name was registered on October 9, 2023. On September 30, 2024, the disputed domain name resolved to a website entitled “Oaklins global limited” that purported to offer financial advisory and investment services (the “Respondent’s website”). The Respondent’s website listed a physical location in Florida, United States. At the time of this decision, the disputed domain name does not resolve to an active web page. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainant asserts rights in the OAKLINS trademark. The Complainant submits that the disputed domain name is confusingly similar to its trademark. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it became aware of the disputed domain name when a member of the Complainant’s marketing team was conducting a search for reviews of the Complainant and came across the disputed domain name in Google search results. The Complainant asserts that the Respondent’s website includes a “Certificate of Operation” from the United Kingdom that includes several typos and appears to be false. The Complainant argues that the Respondent’s use of the disputed domain name is likely to cause confusion amongst consumers seeking financial advisory and consultancy services offered by the Complainant. The Complainant submits that the Respondent is trading on the goodwill of the Complainant’s trademark. The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the disputed domain name was registered for the purpose of disrupting the business of a competitor, and that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 services offered on the Respondent’s website.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 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 It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of the OAKLINS trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The disputed domain name comprises the Complainant’s OAKLINS trademark as its leading element, followed by “globalltd” under the generic Top-Level Domain “.com”. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, in this case “globalltd” (which may be read as an abbreviated form of “global limited”), may bear on assessment of the second and third elements, the Panel finds that such an addition does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 As noted above, the disputed domain name previously resolved to a website that purported to provide financial advisory and investment services under the name “Oaklins”. According to evidence submitted by the Complainant, the Respondent’s website featured a “Certificate of Operation” that featured the following wording: “This is to certify that OAKLINS GLOBAL LIMITED, hving fulfilled all the necessary requirements and having passed all the requisite tests and examinaions, has been granted a license to practice as a trading investment Company in the United Kingdom with License Number 11148044 in accordance with the laws and regulations of the country” [sic]. The Panel notes that the Respondent’s website listed a physical address located in the United States and did not appear to list any financial regulatory information for its activities in the United States. The Panel infers that the Respondent has used the Complainant’s trademark in the disputed domain name and on the Respondent’s website to engage in activity aimed at misleading Internet users, which does not amount to use of the disputed domain name in connection with a bona fide offering of goods or services. No evidence has been produced to demonstrate that the Respondent is commonly known by the disputed domain name. Nor has the Respondent made any legitimate noncommercial or fair use of the disputed domain name. None of the circumstances set out at paragraph 4(c) of the Policy applies in the present case. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has used the Complainant’s OAKLINS trademark to hold itself out as a provider of financial advisory and investment services. Internet users seeking the Complainant online were likely to be misled by the disputed domain name and mistakenly believe that the Respondent’s website was operated by or otherwise endorsed by the Complainant. The Panel infers that the Respondent knew of the Complainant’s prior rights in the OAKLINS trademark when registering the disputed domain name and further finds that by using the disputed domain name in the manner described above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s OAKLINS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the services offered therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The fact the disputed domain name does not resolve currently to an active web page, does not prevent a finding of bad faith given the circumstances of the case. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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 be transferred to the Complainant. /David Taylor/ David Taylor Sole Panelist Date: December 5, 2024
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