The Complainant is Sorel Corporation, United States of America (“United States”), represented by Strategic IP Information Pte Ltd., Singapore.
The Respondents are Jia He, Jiahe, United States (the “First Respondent”), and Liumei Mei, China (the “Second Respondent”).
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019, against the registrants of five disputed domain names. On December 13 and 16, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the then disputed domain names. On December 13, 16, and 17, 2019, the Registrars transmitted by emails to the Center their verification responses disclosing registrants and contact information for the then disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 2019, providing the registrants 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 December 20, 2019.
On December 30, 2019, the Center informed the Complainant of a deficiency with the amended Complaint. The Complainant filed a second amended Complaint withdrawing three of the disputed domain names on January 3, 2020. On January 3, 2020, the Center notified the Parties of the withdrawal of the Complaint with regards to the three disputed domain names.
The Center verified that the Complaint, together with the amended Complaints (hereafter “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 Respondents of the Complaint, and the proceedings commenced on January 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 27, 2020.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 29, 2020. 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 BackgroundThe Complainant is a company presently based in the United States but originally founded in Canada that has since 1962 offered premium all-seasons footwear under the trade mark SOREL (the “SOREL Mark”) and a device mark consisting of the word “sorel” and a polar bear (the “Device Mark”). The Complainant offers its products through various retailers, including department stores and fashion boutiques and through various e-commerce sites, including through the Complainant’s website at “www.sorel.com”.
The Complainant is the owner of numerous trademark registrations for the SOREL Mark in jurisdictions including the European Union, United States, and China. In particular, the Complainant’s trade mark registration for the SOREL Mark in the United States (registration number 3001928 for footwear and related goods in class 25) has a registration date of September 27, 2005, and a date of first use in commerce of 1962.
The Domain Name
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s SOREL Mark;
(ii) that the Respondents have no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the SOREL Mark, having registered the SOREL Mark in numerous jurisdictions. The Domain Names each reproduce the SOREL Mark along with an additional generic word which does not distinguish the Domain Names from the SOREL Mark.
There are no rights or legitimate interests held by the Respondents in respect of the Domain Names. The Respondents are not commonly known as the Domain Names nor do the Respondents have any authorization from the Complainant to register the Domain Names. The Respondents are not making a legitimate noncommercial or fair use of the Domain Names. Rather, the Respondents are using the Domain Names to create websites that purport to sell the Complainant’s products and reproduce the Complainant’s mark and copyrighted photos, such use not being bona fide.
The Domain Names were registered and are being used in bad faith. By using the Domain Names for websites that purport to sell the Complainant’s products, the Respondents are clearly aware of the SOREL Mark and are using it to pass themselves off as the Complainant. Such conduct amounts to registration and use of the Domain Names in bad faith.
B. RespondentThe Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary Matter: Consolidation of RespondentsThe named registrant of each of the Domain Names is a different individual or entity, as identified in section 4 above. UDRP proceedings are normally brought against a single respondent. However, paragraph 10(e) of the Rules states that in certain circumstances a panel may consolidate multiple domain name disputes. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, states:
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g.,
Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against the named registrants on the basis that the Domain Names are under common control. The Domain Names were registered two days of each other and each resolve to identical websites, with the same images and same textual material.
Finally, the Panel notes that neither Respondent has denied any association with the other or objected to the consolidation of the proceedings requested by the Complainant. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all the Parties. As such, for the purposes of the decision going forward, the Panel will refer to the named registrants of the Domain Names as a single Respondent.
6.2. Substantive Matters A. Identical or Confusingly SimilarTo prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the SOREL Mark, having registrations for SOREL as a trademark in the United States as well as in various other jurisdictions.
Each of the Domain Names wholly incorporates the SOREL Mark with the addition of the descriptive term “boots” or “shop” (and a generic Top-Level Domain, being a necessary requirement of a domain name). The addition of such terms to a complainant’s mark does not prevent a finding of confusing similarity, see section 1.8 of the WIPO Overview 3.0 and Wal-Mart Stores, Inc. v. Henry Chan,
WIPO Case No. D2004-0056.
The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s SOREL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsTo succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the SOREL Mark or a mark similar to the SOREL Mark. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.
The Respondent has used the Domain Names to operate websites to sell footwear that, through the use of the SOREL Mark, purport to be legitimate SOREL products.
If the footwear sold on the Respondent’s Website are not genuine Complainant’s products, the Respondent’s use of the Domain Names does not grant it rights or legitimate interests since it is using the Complainant’s SOREL Mark for a site selling counterfeit products.
Even if the Respondent is offering genuine SOREL products from the Respondent’s Website, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903.
WIPO Overview 3.0, section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner:
“… Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, that it is not an authorized dealer or has any particular connection with the Complainant. Rather, its prominent display of the SOREL Mark, Device Mark, and the copyright notice expressly referring to the Complainant give the impression that the Respondent’s Website is an official website of the Complainant. Even if the Respondent is reselling genuine SOREL products, its use of the Domain Names for the Respondent’s Website does not grant it rights or legitimate interests in the Domain Names.
In addition, the Panel notes that the nature of the Domain Names, incorporating the SOREL Mark in its entirety with the addition of one or more descriptive terms, carries a risk of implied affiliation with the Complainant (WIPO Overview 3.0, section 2.5.1).
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put forth evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the SOREL Mark at the time the Domain Names were registered. The Respondent’s Website contains numerous references to the Complainant, including reproducing the Device Mark and copying the Complainant’s copyrighted photos of its products. The registration of the Domain Names in awareness of the SOREL Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent registered the Domain Names for the purposes of operating websites specifically to sell either the Complainant’s products or counterfeit products that compete with the Complainant’s footwear. The Respondent is using the Domain Names that are confusingly similar to the SOREL Mark to sell products, be they genuine or otherwise, in competition with the Complainant and without the Complainant’s approval and without meeting the Oki Data test. Consequently, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant and the Complainant’s SOREL Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under 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 Domain Names
Nicholas Smith
Sole Panelist
Date: February 3, 2020