WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Seafolly Pty Limited and Seafolly IP Co. Pty Ltd. formerly known as P & Y Halas Pty Limited) v. Kaoyuanws Trade

Case No. DNL2017-0042

1. The Parties

Complainants are Seafolly Pty Limited (hereinafter “First Complainant”) and Seafolly IP Co. Pty Ltd. (formerly known as P & Y Halas Pty Limited) (hereinafter “Second Complainant”) both of Alexandria, New South Wales, Australia (hereinafter jointly referred to as “Complainants”), represented by K&L Gates LLP, Australia.

Respondent is Kaoyuanws Trade of Hamburg, Germany.

2. The Domain Name and Registrar

The disputed domain name <seafollynederland.nl> (the “Domain Name”) is registered with SIDN through Registrar.eu.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2017. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On July 21, 2017, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 28, 2017. In accordance with the Regulations, article 7.1, the due date for Response was August 17, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 18, 2017.

The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on August 25, 2017. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4 Factual Background

First Complainant is a successful designer, manufacturer, wholesaler and retailer of swimwear and related accessories by reference to the Seafolly brand and the SEAFOLLY trademark. Seafolly products are sold in about 543 multi-brand stores in Australia, in Seafolly concept stores and in a further 1,755 retail outlets around the world including department stores, inter alia in the Netherlands. First Complainant owns the domain names <seafolly.com> and <seafolly.com.au>.

Second Complainant is the owner of the Australian trademark SEAFOLLY, registered on November 17, 2005, registration number 1086227, for goods and services in classes 9, 18, 24, 25 and 35, which served for the purpose of basic application of the International trademark SEAFOLLY, registered on May 17, 2005, registration number 896290, for goods and services in classes 9, 18, 24, 25 and 35, designating inter alia the Benelux (hereinafter referred to as the “Trademark”).

Since 1977, Second Complainant has granted an exclusive license to the First Complainant to use the Trademark.

According to Complainants, they have developed an extensive reputation as the designer, manufacturer and seller of the products and services under the Seafolly brand and by reference to the Trademark.

The Domain Name was registered on October 10, 2016. The Domain Name resolves to a website re-creating or imitating the design and look and feel of First Complainant’s official websites and pretending to offer for sale original Seafolly products under the Trademark (the “Website”).

5. Parties’ Contentions

A. Complainant

The Domain Name is identical or confusingly similar to the Trademark.

Complainants contend, to the extent relevant, that the Domain Name is confusingly similar to the Trademark. The country code Top-Level Domain (“ccTLD”) suffix “.nl” should be disregarded under the confusing similarity test, because it is a technical requirement of registration.

Complainants argue that the Trademark is identical to the “seafolly” component in the Domain Name, being the distinctive and dominant component of the Domain Name. The mere addition of “nederland” (the Dutch word for “Netherlands”) does not prevent the likelihood of confusion or neutralize the similarity with the Trademark. The term “nederland” is merely a descriptive geographical term and should be disregarded for the purpose of article 2.1(a) of the Regulations.

According to Complainant, the “Seafolly” products and services available in the Netherlands are provided exclusively under and by reference to the Trademark, meaning that consumers are likely to think that there is a real connection or affiliation between the Domain Name and Complainants and their “Seafolly” products and services. Also in light of Complainants’ extensive reputation in relation to the “Seafolly” products and services, confusion between the Domain Name and the Trademark is certain to arise, according to Complainants.

Complainants contend that Respondent has no rights to or legitimate interests in the Domain Name.

According to Complainants, Respondent has no rights in the Trademark. Complainants are not aware of any legitimate third-party use of the Trademark. Respondent has not been authorized by Complainants to use neither the Trademark nor the Domain Name.

In addition, Complainants argue that Respondent is in no way sponsored or endorsed by, or affiliated with, the business of Complainants and in any event, Respondent does not meet the requirements of the Oki Data Test¹ as the Website does not disclose Respondent’s (lack of) relationship with Complainants.

According to Complainants, they have not been able to identify any preparations by Respondent for bona fide use of the Domain Name, any instance of Respondent being known by the Domain Name, or legitimate noncommercial or fair use of the Domain Name.

Complainants contend that Respondent registered and is using the Domain Name in bad faith.

Complainants argue that Respondent knew or should have known of the Trademark and the products and services offered for sale under the Trademark, especially since the Trademark is well known and enjoys a worldwide reputation. According to Complainant, referring to the arguments mentioned above, it is not credible that Respondent was unaware of the existence and use of the Trademark when registering the Domain Name.

Complainants contend that Respondent appears to have provided a false address when registering the Domain Name since this address does not exist and the Website does not provide any address or commercial register details as contact details. As a result, Complainants submit that there is cause to doubt the authenticity of Respondent’s operations for the purpose of the Regulations.

Complainants further contend that Respondent has been involved in fraudulent businesses in another case under the Regulations (Coccinelle S.p.A v. Kaoyuanws Trade, WIPO Case No. DNL2017-0008), with circumstances similar to those in this matter, in which case the Panel found that Respondent has historically operated a business model that registers domain names to take unfair advantage of the trademark rights of others. This also prima facie demonstrates a pattern of bad faith registration and use, according to Complainants.

There is bad faith registration and use since the Domain Name was registered and is being used in order to attract web users, through the similarity of the Domain Name to the Trademark, to the Website with the specific aim of harming the reputation and disrupting the business of Complainants.

Complainants have submitted documents, including references to panel decisions, in support of the above arguments.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

As Respondent has not filed a Response, the Panel shall rule based on the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact.

The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to Respondent.

Pursuant to article 2.1 of the Regulations, Complainants’ request to transfer the Domain Name must meet three cumulative conditions:

a. the Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and

b. Respondent has no rights to or legitimate interests in the Domain Name; and

c. the Domain Name has been registered or is being used in bad faith.

Considering these conditions, the Panel rules as follows.

A. Identical or Confusingly Similar

Complainants have based the Complaint on the Trademark. Complainants have submitted a copy of the registration of the Trademark demonstrating that Second Complainant is the holder of the Trademark. The Trademark is protected under Dutch law. Therefore, the Panel assumes the validity of the Trademark and will review the Complaint on that basis.

It is established UDRP case law that the ccTLD suffix “.nl” may be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and the disputed domain name on the other hand (see Caterpillar Inc. v. H. van Zuylen Materieel, WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

The Domain Name includes the entire Trademark together with the geographical term “Nederland”. The Trademark is the distinctive and dominant element of the Domain Name. The addition of “nederland” to the Trademark in the Domain Name does not influence the similarity between the Trademark and the Domain Name. The Domain Name is textually, visually and phonetically nearly identical to the Trademark.

The Panel finds that the Domain Name is confusingly similar to the Trademark for purposes of the Regulations. Therefore, the first requirement of article 2.1(a) under I of the Regulations is met.

B. Rights or Legitimate Interests

Article 2.1(b) of the Regulations requires Complainants to demonstrate that Respondent has no rights to or legitimate interests in the Domain Name. This condition is met if Complainants make out a prima facie case that Respondent has no such rights or legitimate interests and if Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002).

Complainants allege that Respondent lacks rights to or legitimate interests in the Domain Name for the reasons set out in Section 5.A above. The registration of the Trademark precedes the registration of the Domain Name. Furthermore, it is uncontradicted that Complainants have not granted any license or otherwise authorized Respondent to use the Trademark or to apply for any domain name incorporating the Trademark. Further, no commercial relationship exists between Complainants and Respondent, nor does the Website disclose such lack of relationship. The Panel further notes that in these circumstances a website which effectively copies Complainant’s website cannot constitute rights to or legitimate interests in the Domain Name.

The Panel is satisfied that Complainants have fulfilled its obligation to establish prima facie that Respondent has no rights to or legitimate interests in the Domain Name. As a result of its failure to submit a response, Respondent has not refuted the arguments of Complainants and/or shown rights to or legitimate interests in the Domain Name. The Panel could not establish any indication that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent in any possible other way has a right to or legitimate interest in the Domain Name.

In the Panel’s view, the further circumstances of this case, which are similar to those of previous .nl cases “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Katja Braun’s nets, WIPO Case No. DNL2016-0060 and (involving Respondent) Coccinelle S.p.A v. Kaoyuanws Trade, WIPO Case No. DNL2017-0008, also cast doubt on the authenticity of Respondent’s operations for purposes of the Regulations.

The Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to Respondent in accordance with article 16.4 of the Regulations. However, the written notice to the postal address as provided to SIDN by Respondent at registration of the Domain Name was undeliverable. Indeed, Respondent appears to have provided a fictitious address, as the street (“Fasanenstrasse”) in the town (“20146 Hamburg”) mentioned in the contact details provided by Respondent upon registration of the Domain Name appears to be incorrect. The Panel also notes that no response has been submitted and that there appears to be no connection to the stated (or any other) business. Moreover, the Website does not provide any other relatable name or identity as would be expected in legitimate circumstances.

The fraudulent use by Respondent cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. As Respondent cannot be considered a genuine reseller, the Panel need not discuss further the so-called Oki Data criteria and considerations ( See inter aliaScore Retail Nederland B.V. v. Anke Eisenhower soho, Case No. DNL2017-0034).

The Panel concludes that Complainants have met the second requirement of article 2.1(b) of the Regulations.

C. Registered or Used in Bad Faith

Considering the apparent well-known status of the Trademark and prior rights of Complainant, the fact that Complainants have never licensed or otherwise authorized Respondent to use the Trademark in a domain name and the nature of the Website, the Panel is of the opinion that Respondent knew or should have known of the Trademark at the time of registration of the Domain Name. Also, the use of the Domain Name for a website that re-creates and imitates Complainant’s official website amounts to registration and use of the Domain Name in bad faith.

Also in light of its considerations above under Section 6.B, the Panel finds that the Domain Name has been registered and used for fraudulent purposes and as a result in bad faith. Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its Website, by creating a likelihood of confusion which may arise with the Trademark as to the source, sponsorship and endorsement of the Website. This constitutes evidence of bad faith registration and use in accordance with article 3.1(d) of the Regulations.

Previous panels have moreover found that the incorporation of a well-known trademark in a domain name without plausible explanation is in itself an indication of bad faith (see Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 in which the panel stated: “The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”).

On all of the above grounds, the Panel finds that the requirement of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations has been met.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <seafollynederland.nl>, be transferred to Complainants, more in particular, for practical reasons, to First Complainant.

Remco M.R. van Leeuwen
Panelist
Date: September 11, 2017

¹ The decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 guides the question as to whether a reseller is using a disputed domain name connection with a bona fide offering of goods or services. Having been rendered under the Uniform Domain Name Dispute Resolution Policy ("UDRP") this decision has been confirmed to be of relevance for the Regulations, inter alia in Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024 and Maison Louis Latour v. Jos Beeres Wijnkoperij,WIPO Case No. DNL2011-0074.