Complainants are On AG and On Clouds GmbH, c/o On AG, Switzerland, represented by Rentsch Partner AG, Switzerland.
Respondents are Stefan Neumann, Patrick Kalb, Lukas Ziegler, and Katja Eberhardt, Germany; Mathias Hartman, Germany / Domain Administrator, Turkey; Bettina Presser, Germany / Domain Admin, Privacy Protect LLC, United States of America (“United Sates”); Johanna Koehler, Germany / Domain Administrator, Turkey; Mitja Schmidt, Germany / Domain Administrator, Turkey; Helle Mynster, Germany / Domain Administrator, Turkey; Tonnis Wolthuis, Australia / Domain Administrator, Turkey (collectively “Respondents”). 2. The Domain Names and Registrars
The disputed domain name The disputed domain names The disputed domain names Hereinafter, the disputed domain names will be collectively referred to as the “Disputed Domain Names”. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2020. On November 6, 2020, the Center transmitted by email to the Registrars requests for registrar verifications in connection with the Disputed Domain Names. On November 7, 9, and 10, 2020, the Registrars transmitted by emails to the Center their verification responses disclosing registrants and contact information for the Disputed Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainants on November 10, 2020, providing the registrants and contact information disclosed by the Registrars, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on November 13, 2020. 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 Respondents of the Complaint, and the proceedings commenced on November 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2020. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on December 7, 2020. The Center appointed Lorelei Ritchie as the sole panelist in this matter on December 16, 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 Background Undisputed facts include the following. Complainants, together with their affiliated companies (collectively, “Complainants”) provide sports apparel and shoes globally under the marks ON; ON RUNNING; CLOUD; and RUN ON CLOUDS, as well as a stylized version of ON. Complainants own various registrations for these marks for clothing and shoes, including International Registration No. 1050016 (registered April 21, 2010) for ON; International Registration No. 1185372 (registered October 25, 2013) for ON RUNNING; International Registration No. 1361124 (registered May 4, 2017) for CLOUD; and, International Registration No. 1258068 (registered May 22, 2015) for RUN ON CLOUDS; as well as International Registration No. 1503051 (registered September 24, 2019) for a stylized version of ON, displayed as . The Disputed Domain Names were created between September 14 and October 28, 2020. While some are currently inactive, the URLs associated with each of the Disputed Domain Names has been set up by Respondents to resolve to a website that appears to mimic an official website of Complainants, and which advertises products and services under Complainants’ stylized mark ON, displayed as . Respondents have no affiliation with Complainants. Complainants have not authorized any activities by Respondents, nor any use of Complainants’ trademarks thereby. 5. Parties’ Contentions A. Complainants Complainants contend that the (i) Disputed Domain Names are identical or confusingly similar to Complainants’ trademarks; (ii) Respondents have no rights or legitimate interests in the Disputed Domain Names; and, (iii) Respondents registered and are using the Disputed Domain Names in bad faith. In particular, Complainants contend that they own the marks ON; ON RUNNING; CLOUD; and, RUN ON CLOUDS, as well as a stylized version of ON, displayed as . Complainants contend that these marks have become well recognized globally for the high-end sports apparel and shoes that Complainants offer under the marks. Complainants contend that the Disputed Domain Names consist of various versions of Complainants’ registered marks, and merely add generic or descriptive terms, or geographically descriptive terms, that consumers would associate with sales by Complainants of their merchandise as sold under these marks. Complainants contend that Respondents have used the Disputed Domain Names to lure in customers looking for Complainants, by linking all of the Disputed Domain Names to websites that appear to mimic an official website of Complainants, and which display Complainants’ registered marks including . Complainants further contend that Respondents have no rights or legitimate interest in the domain name registrations or use of the Disputed Domain Names. Rather, Complainants contend that Respondents have acted in bad faith in registering and using the Disputed Domain Names, when Respondents clearly knew of Complainants’ rights. Complainants thus request that the Panel cancel each of the registrations for the Disputed Domain Names. B. Respondents Respondents did not reply to Complainants’ contentions in this proceeding. 6. Discussion and Findings A. Consolidation As a preliminary matter, the Panel notes that there are numerous named Respondents in this case. Paragraph 3(c) of the Rules explains that a complaint may relate to more than one domain name, provided that they are registered by the same domain name holder. Situations may occasionally arise in which multiple respondents may be considered as one domain name holder for the purpose of this provision. Such a situation arises here. In this case, each of the Disputed Domain Names has been used in a similar manner to resolve to websites that appear to mimic an official website of Complainants. Each of the Disputed Domain Names was also registered within a few weeks’ time, with several being registered on the same date. None of the named Respondents has replied to the contentions in the Complaint, and most were listed with addresses that are undeliverable. The Panel is satisfied that, under these circumstances, all of the captioned entities are properly included as Respondents in this case. The Panel finds that the Disputed Domain Names are subject to common control and the consolidation would be fair and equitable to all parties (see section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). B. Identical or Confusingly Similar This Panel must first determine whether the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that they are. The Disputed Domain Names incorporate various versions of Complainants’ registered marks, and merely add descriptive terms, or geographically descriptive terms. The disputed domain name Numerous UDRP panels have agreed that supplementing or modifying a trademark with descriptive words, including geographically descriptive wording, does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski,WIPO Case No. D2000-1614 (transferring The Panel finds that the Disputed Domain Names are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”. Respondents did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondents have used the Disputed Domain Names to divert Internet users to websites that appears to mimic Complainants’ website but which are unaffiliated with Complainants or Complainants’ products. Accordingly, the Panel finds that Complainants have made a prima facie showing of Respondents’ lack of rights or legitimate interests in the Disputed Domain Names, which Respondents have not rebutted. C. Registered and Used in Bad Faith There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondents have previously linked each of the Disputed Domain Names to websites that appear to mimic an official website of Complainant, and which display Complainants’ registered marks. Respondents are thus trading on the goodwill of Complainants’ trademarks to attract Internet users, presumably for Respondents’ own commercial gain. Even if Respondents could otherwise justify registering and using domain names that contain dictionary terms, the Panel is swayed by Respondents’ use of Complainants’ registered marks in the content of the linked websites. The websites advertise products purporting to be offered by Complainants, and displayed alongside Complainants’ registered marks on the web pages, including Complainants’ stylized mark . The Panel finds that for purposes of the UDRP, Complainants have shown sufficient evidence that Respondents registered and used the Disputed Domain Names in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names Lorelei Ritchie
Sole Panelist
Dated: December 21, 2020
Full & Egal Universal Law Academy