Internet Services Australia 1 Pty Ltd v Alvaro Nortes, Mi tienda

WIPO Case No. D2025-2703

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Internet Services Australia 1 Pty Ltd v. Alvaro Nortes, Mi tienda

Case No. D2025-2703

1. The Parties

The Complainant is Internet Services Australia 1 Pty Ltd, Australia, represented by Bird & Bird, Australia.

The Respondent is Alvaro Nortes, Mi tienda, Netherlands (Kingdom of the).

2. The Domain Name and Registrar

The disputed domain name <iconic-wellington.com> (the “Domain Name”) is registered with Tucows

Domains Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2025. On July 9, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 9, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent (Contact Privacy Inc. Customer 0173846891) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 10, 2025, 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 11, 2025.

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 11, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2025.

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The Center appointed Ian Lowe as the sole panelist in this matter on August 11, 2025. 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 was established in 2011, and since that date has provided online retail, shopping and related services in Australia and New Zealand (as well as the ASEAN region and Latin America). In particular, the Complainant has promoted and sold a range of clothing, shoes and accessories for women, men and children as well as beauty products, homewares and sports equipment. It has provided retail services in relation to these products through its websites at “ and “

The Complainant is the proprietor of several registered trademarks for THE ICONIC, including Australia trademark number 1495348 registered on June 7, 2012, and New Zealand trademark number 1004806 registered on March 10, 2015.

The Domain Name was registered on January 19, 2025. Attempts by the Panel to access the website at the Domain Name result in a warning page stating “Dangerous site. Attackers on the site that you tried visiting might trick you into installing software or revealing things like your passwords, phone or credit card numbers.” It appears that at the time of filing of the Complaint the Domain Name resolved to a Shopify webpage stating “This store does not exist”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its THE ICONIC trademark (the of the Policy.

“Mark”), that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the

B. Respondent

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

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

(i)        the 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 Domain Name; and

(iii)      the Domain Name has been 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

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Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

Ignoring the generic Top-Level Domain “.com”, the Domain Name comprises the substantive part of the Mark, namely “ICONIC”, with the addition of a hyphen and the term “wellington” a city in New Zealand, a country where the Complainant has continuously and extensively promoted its goods and services by

reference to the Mark. The Panel finds that the addition of the term “wellington” does not prevent a finding of

confusing similarity between the Domain Name and the Mark. WIPO Overview 3.0, section 1.8.

Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the

Complainant has rights, and 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. Accordingly, 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.

The Complainant has made out a strong prima facie case that the Respondent could have no rights or Panel has reviewed the Internet Archive’s Wayback Machine for the Domain Name and found a screenshot of March 20, 2025, confirming this use with products priced in New Zealand dollars. The word “iconic” in this context is not merely descriptive but corresponds directly to the Complainant’s distinctive trademark.
legitimate interests in respect of the Domain Name. The evidence indicates that the Complainant has not
licensed or otherwise authorized the Respondent to use the Mark and there is no evidence that the
Respondent has been commonly known by the Domain Name. The Respondent appears to be using the
Domain Name in connection with retail services that compete with the Complainant’s business, and the

The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

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 Domain Name incorporates the distinctive element of the Complainant’s well-known Mark with the addition of “wellington”, a major city in New Zealand where the Complainant operates. The timing of the registration of the Domain Name (January 19, 2025) occurred long after the Complainant’s trademark rights were established and its reputation built.

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The Panel is accordingly satisfied, on balance, that the Respondent was aware of the Complainant and its rights in the Mark when it registered the Domain Name. The Domain Name incorporates the dominant part of Complainant’s Mark in the Domain Name, and the addition of “wellington” suggests knowledge of the

Complainant’s New Zealand operations. In addition, the Respondent appears to have used the Domain
Name in connection with retail services similar to those offered by the Complainant.

The website at the Domain Name now generates a warning that it is a dangerous site that may well be used to phish for personal and financial information. Panels have held that the use of a domain name for such illegitimate activity constitutes bad faith. In any event, the Panel finds that the Respondent registered and is using the Domain Name to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Such use constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.

The Panel finds that the Domain Name has been registered and is being used in bad faith.

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 Domain Name, <iconic-wellington.com>, be transferred to the Complainant.

/Ian Lowe/
Ian Lowe
Sole Panelist
Date: August 25, 2025