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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OVS S.p.A. v. Domain Admin, Honey Salt ltd

Case No. D2021-2258

1. The Parties

The Complainant is OVS S.p.A., Italy, represented by Rapisardi Intellectual Property, Italy.

The Respondent is Domain Admin, Honey Salt ltd, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <oviesse.sucks> is registered with Rebel Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 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 July 19, 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 July 22, 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 July 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on August 26, 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

The Complainant, founded in 1972, sells clothing, household items, sporting goods, toys, perfumes, and leather goods through a network of 1,200 stores in Italy and abroad. It is one of the largest clothing retailers in Italy and in 2020 had net sales of EUR 1.018 million.

The Complainant owns two international trademark registrations for its OVIESSE trademark including International Trademark “OVIESSE”, Registration No. 896461 filed on April 13, 2006 and designating numerous countries worldwide. It also owns numerous top level and country code level domain names incorporating its OVIESSE mark including <oviesse.co.uk>.

The disputed domain name was registered on December 1, 2020 and resolves to a page with the heading at the top corner of “Oviesse Sucks - Post Customer Review and Feedback” and contains a series of critiques of both the Complainant’s business and of what appear to be unrelated third party businesses.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name wholly incorporates its OVIESSE trademark registration before the generic Top-Level Domain (“gTLD”) “.sucks” and is therefore identical or confusingly similar to it.

The Complainant says that its OVIESSE mark is a distinctive coined term that has no meaning. It asserts that it has not authorised the Respondent to use its mark and that there is no evidence that the Respondent has used or registered it such as might justify its registration of the disputed domain name. As far as noncommercial or legitimate criticism is concerned on the website to which the disputed domain name resolves, the Complainant submits that: (a) the criticisms on the website are not related to the Respondent; (b) the comments appear anonymously and are undated with no supporting evidence as to their veracity; and (c) the Complainant’s trademark OVIESSE is depicted prominently on the website. For these reasons, the Complainant says that the Respondent does not have any rights or legitimate interests in the disputed domain name.

As far as registration in bad faith is concerned, the Complainant submits that its OVIESSE mark is well known in the fashion industry and is a coined term and that the Respondent did not independently develop the disputed domain name but must have been aware of the Complainant’s mark when it did so. As far as use in bad faith is concerned, it says that the website at the disputed domain name has not been used in connection with any genuine noncommercial criticism of the Complainant and the content of the website includes anonymous and undated comments without any indication or evidence that these are genuine comments. The Complainant says that it seems most likely that the website has been set up as a pretext and that its aim is to take unfair commercial advantage of the Complainant’s OVIESSE trademark by increasing Internet traffic to the associated website and to other websites owned by the Respondent or by third parties.

In addition, the Complainant submits that the registration and use of the disputed domain name in bad faith occurs when circumstances indicate that the Respondent has registered the disputed domain name primarily for the purpose of damaging the Complainant who is the owner of the trademark. The Complainant notes in this regard that the website at the disputed domain name clearly states: “Oviesse Sucks. OVS is an Italian clothing company. It has stores in 35 countries in Europe, Latin America and Asia with a total of about 1285 locations. Revenues were €1.32 billion in 2015. Tell the world why Oviesse sucks!”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trademark rights for its OVIESSE mark including International Trademark Registration No. 896461 filed on April 13, 2006 and designating numerous countries worldwide.

The disputed domain name wholly incorporates the OVIESSE mark with no additional element prior to the gTLD “.sucks”.

For the purposes of this element of the Policy the disputed domain name is therefore identical to the Complainant’s registered trademark right and the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the disputed domain name is a distinctive, coined term and that there is no evidence that the Respondent has used or registered it such as might justify its registration. It has also confirmed that it has never authorised the Respondent to use its mark. None of these assertions have been rebutted by the Respondent.

However, the website at the disputed domain name is presented at least on its face as a criticism site and therefore it is for the Panel to determine whether this amounts to noncommercial legitimate criticism such as may justify the Respondent’s use of the disputed domain name for the purposes of this element of the Policy. In this regard the Complainant has submitted that: (a) the criticisms on the website are not related to the Respondent; (b) the comments appear anonymously and are undated with no supporting evidence as to their veracity; and (c) the Complainant’s trade mark OVIESSE is depicted prominently on the website.

Firstly, the Panel notes that when it visited the website only 3 of the 17 criticisms listed on the website appear to relate to the Complainant. Secondly, it is true that they are all anonymous and undated. Thirdly, the use of the term “Oviesse” on the website is clearly a descriptive reference to the Complainant’s business and the use of the abbreviation “OVS” is also used descriptively in relation to the Complainant’s business. Fourthly, on the left hand side of the page at the disputed domain name there is a list under “Popular Pages” and also under “Recent Updates” of other “.sucks” pages for numerous well-known brands with links to those pages. Some of those pages feature endorsements of the particular brand rather than criticism and also social media links. Many of the purported criticisms on those pages appear to have no apparent relationship to the brand concerned.

Near the end of the website page at the disputed domain name there is the following explanation of this site:

“Everything.sucks is a non-profit organization and communications forum for social activism. This website allows users a voice to share their point of view online about what sucks in the world.

We occasionally buy a dot sucks domain and point it at a specific page. We do this to bring awareness to our site and because, well, we love the dot sucks domain. If you ask us if we would sell the domain, our answer is simple. Absolutely not. We will give it to you.

If the domain pointing at this page inspires passion in you and you want to build a fuller site around it, you can have it. That’s right, we will simply give it to you. We want to promote more sites on the Internet where people can share their voices.”

This explanation of the purpose of the website and that the Respondent would rather give away the disputed domain name than sell it, contrasts with the findings of the three-member panel in a very recent defended decision involving the Respondent and another domain name in the same “.sucks” gTLD. In Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd, WIPO Case No. D2020-3398concerning the domain name<tetrapak.sucks>, the three-member panel found that the Respondent’s website in that case was not a legitimate noncommercial criticism site and noted as follows:

“The Panel finds that in the present case these conditions are not met: a) the Domain Name was being offered for sale at an amount apparently exceeding the out-of-pocket expenses of Respondent soon after its registration, b) the criticisms included in the Website are not of Respondent itself, c) the comments appear anonymously and without dates on the Website, with no supporting evidence on their genuiness, d) the Website contains many links to other analogous “.sucks” webpages about third parties’ brands and Respondent has acknowledged that it is the registrant of multiple such domain names, whereas its business model involves acquiring and reselling such domain names, and e) the trademark TETRA PAK of Complainant is depicted prominently on the Website.”

The Panel then went on to note a history of similar cases involving the Respondent and domain names in the “.sucks” gTLD space.

Although, in the present proceedings there is no suggestion of the disputed domain name having been offered for sale, other similarities in this case are apparent. The large majority of the criticisms are not about the Respondent, they are in any event anonymous, undated and unverified and the webpage at the disputed domain name also features links to other analogous “.sucks” webpages about third parties’ brands. While in the present case, the Panel did not have the benefit of a response, the panel in Tetrapak supra did and noted that the Respondent acknowledged in those proceedings that it was the registrant of multiple “.sucks” domain names and that its business model involves acquiring and reselling such domain names.

On this basis the Panel finds that the Respondent’s use of the disputed domain name in this case is not consistent with usage for a prima facie noncommercial, genuinely fair, and not misleading or false criticism site (WIPO Overview 3.0, section 2.6.3). By its own admission in the Tetrapak case supra (and contrary to the statement on the website at the disputed domain name) the Respondent’s business model and motivation for presenting its “.sucks” websites is commercial in that it seeks to acquire and re-sell these sort of domain names. In addition, the Panel finds that very few of the critiques on the website at the disputed domain name even relate to the Respondent and there is no evidence in any event to suggest that these are genuine. The history of past cases involving the Respondent and analogous “.sucks” domain names further confirms the Panel’s review in this regard.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name for the purposes of this element of the Policy.

C. Registered and Used in Bad Faith

The OVIESSE mark is a highly distinctive coined term and the Complainant’s registration of its mark was made many years prior to the registration of the disputed domain name. Further, the Respondent clearly chose the disputed domain name with the purpose of referring to the Complainant’s mark and business (ostensibly for a criticism website) so there can be no question but that the Respondent was well aware of the Complainant’s mark when it registered the disputed domain name.

As discussed under Part B above, the Panel does not accept that the website at the disputed domain name is a bona fide noncommercial criticism site. This Panel is of a similar view to the panel in the Tetrapack case supra which found that:

“It seems not unlikely, also in view of Respondent’s admitted business practice of acquiring and reselling “.sucks” domain names, that the Website has been set up as a pretext and that its aim was to take unfair commercial advantage of Complainant’s TETRA PAK trademark by increasing Internet traffic to the associated website and to other websites of Respondent or of a third party related to Respondent (and possibly the prices of the domain names to which these websites resolve).

Paragraph 4(b)(ii) of the Policy provides that there is evidence of registration and use of a domain name in bad faith where the respondent has “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct”.

The Respondent has used the Complainant’s very distinctive trademark to register the disputed domain name for its own purposes which has prevented the Complainant’s registration. The Respondent has been involved in a series of previous and similar “.sucks” cases which is evidence of its engagement in a pattern of such conduct.

The Panel also notes that the disputed domain name was registered with a privacy shield service in order to hide the Respondent’s identity. This reinforces the Panel’s view of the iIlegitimacy of the website at the disputed domain name as being a genuine criticism site and of the Respondent’s bad faith. As a consequence, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complaint also succeeds under this element 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 <oviesse.sucks> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: September 9, 2021

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