The Complainant is K-Swiss Inc., United States of America (“US”), represented by MBM Intellectual Property Law LLP, Canada.
The Respondent is Kuefer Bernd, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2021. On March 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 8, 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 April 14, 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 in English on April 17, 2021. On April 14, 2021, the Center transmitted an email communication to the Parties in English and Vietnamese regarding the language of the proceeding. On April 17, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 in English and Vietnamese of the Complaint, and the proceedings commenced on April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2021. The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on May 20, 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, K-Swiss Inc., is a US-based company which has produced footwear products under the brand PALLADIUM for over 70 years. The Complainant’s products are now sold across the world, including America, Canada, Europe and Asia. The Complainant also has the active presence on social media for promoting its PALLADIUM brand, with over 209,000 followers on Instagram, over 411,000 likes on Facebook and over 17,000 followers on Twitter. The Complainant’s trademark PALLADIUM has been registered for goods and services in class 25 in a variety of countries under a number of trademark registrations, including but not limited to the Canadian trademark registration No. TMA231207 registered on December 15, 1978. Additionally, the Complainant is the registrant of some domain names featuring the trademarks PALLADIUM, notably the domain name The Disputed Domain Name The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights. First, the Complainant claims both statutory and common law rights in the PALLADIUM trademarks. Namely, the Complainant contends that the Complainant is the registered owner of a family of worldwide trademarks for PALLADIUM in association with footwear, clothing items and retail stores thereof. The Complainant also claims that the PALLADIUM trademarks have been used extensively all over the world, and the PALLADIUM trademarks have been recognized globally by consumers. Besides, the Complainant contends that the Complainant is the owner of several domain names including PALLADIUM trademarks. Second, the Complainant asserts that the Disputed Domain Name is confusingly similar to the PALLADIUM trademarks owned by the Complainant since the Disputed Domain Name incorporates the Complainant’s trademarks PALLADIUM in its entirety, and the addition of the descriptive term “boot” and geographical term “Canada” could not dispel any likelihood of confusion. Third, the Complainant argues that the Disputed Domain Name presents a high degree of similarity to the Complainant’s domain name Finally, the Complainant contends that, in addition to the overwhelming likelihood of confusion between the Disputed Domain Name and the PALLADIUM trademarks, the website under the Disputed Domain Name also displays the Complainant’s exact PALLADIUM logo at the top. (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. First, the Complainant contends that the Respondent cannot argue that it is commonly known by the Disputed Domain Name because of the existence for a short period of time of the Disputed Domain Name, when comparing with the Complainant’s use of PALLADIUM trademarks from 1947. Second, the Complainant contends that all the images of the PALLADIUM branded footwear on the website under the Disputed Domain Name are directly owned by or exclusively licensed to the Complainant. The Respondent has not been given the required authorization to exploit these images in any manner whatsoever. Third, the Complainant suspects the authenticity of the PALLADIUM branded products, which are offered for sale at heavily discounted prices, through the website under the Disputed Domain Name. Further, the Complainant argues that the website may be designed to phish for personal information and credit card details. Fourth, the Complainant contends that there is no bona fide offering of goods or services by the Respondent. Also, the Complainant claims that the Respondent is using the PALLADIUM trademarks in association with retail services, which is within the scope of the Complainant’s trademark registrations. Such use does not fall within the parameters of a bona fide offering of services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. Finally, the Complainant submits that the Respondent has no connection or affiliation with the Complainant. The Complainant has not authorized the Respondent to use the PALLADIUM trademarks or the Disputed Domain Name. (iii) The Disputed Domain Name was registered and is being used in bad faith. First, the Complainant claims that through the use of the Disputed Domain Name, the Respondent is intentionally attempting to attract Internet users to the website thereunder for commercial gain by creating a likelihood of confusion with the Complainant’s PALLADIUM trademarks, as to the source and/or affiliation and/or endorsement of the Disputed Domain Name. Further, the Complainant contends that the website under the Disputed Domain Name is designed to deceive Internet users into the belief that it is affiliated with the Complainant and/or an authorized distributor of the Complainant’s PALLADIUM branded footwear while there is no connection between them in fact. Second, the Complainant argues that the Respondent does not have rights or legitimate interests on the PALLADIUM trademarks and there is no credible explanation for the Respondent’s choice of the Disputed Domain Name, which is a significant factor in assessing bad faith. Additionally, the Complainant contends that the Respondent acted in bad faith in registering the Disputed Domain Name since the website thereunder appropriates the Complainant’s identical PALLADIUM logo, product images directly owned by or exclusively licensed to the Complainant, and likely offers counterfeit goods. Also, the Complainant contends that the Respondent registered the Disputed Domain Name to disrupt the Complainant’s business in its attempt to trade off of the goodwill of the Complainant. Finally, the Complainant submits that the Respondent was deliberately concealing its identity for the sole purpose of disrupting the Complainant’s ability to notify the Respondent of a proceeding against it and this supports an inference of bad faith. With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issues (i) Respondent’s Identity The Panel notes that at the time the Complaint was filed on March 3, 2021, the Respondent was identified as “Domain Administrator”. On March 8, 2021, the Registrar revealed the underlying Registrant “Kuefer Bernd”. The Center sent an email communication to the Complainant on April 14, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On April 17, 2021, the Complainant filed an amendment to the Complaint, adding the named Respondent in the initial Complaint with the underlying registrant. (ii) Language of the Proceeding The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese. As the Complaint was filed in English, the Center, in its notification dated April 14, 2021, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) submit the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding by April 17, 2021. On April 17, 2021, the Complainant submitted a request that English be the language of the proceeding. According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred, and the possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679). In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to: (i) the fact that the Complainant, an American entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; (ii) the English language is quite popular in Germany, where the Respondent is located, and as shown in Annex 21 of the Complaint that the website’s contents under the Disputed Domain Name was in English; these suggest that the Respondent has ample knowledge of the English language and is able to communicate quite well in English; (iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in neither English nor Vietnamese. Therefore, for the purpose of easy comprehension of the Complainant (the party majorly taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English. (iii) The Respondent’s Failure to Respond The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413,and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar The Complainant is required to establish the two following elements: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark. First, the Panel finds that the Complainant has evidenced that it has trademark rights in and to the trademarks PALLADIUM, which were registered in a number of countries before the registration of the Disputed Domain Name. In addition, it is evidenced that the Complainant has widely used the PALLADIUM trademarks for footwear products. Second, the Disputed Domain Name comprises the Complainant's PALLADIUM trademarks, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademarks is the addition of the suffix elements “boot” (which is a dictionary term) and “canada” (which is a geographical term). The Panel finds that “palladium” remains recognizable in the Disputed Domain Name. It is well established that the addition of a geographical term and a dictionary term to a trademark does not prevent confusing similarity, as it was found in previous UDRP decisions (see, e.g., Supercell Oy v. See Privacy Guardian.org / Mediastack,WIPO Case No. D2017-2177; Johnson & Johnson v. Tung Nguyen, WIPO Case No. D2017-1635; Philip Morris Products S.A. v. Halil Cakir,WIPO Case No. D2018-1656; Continental Exchange Solutions Inc. DBA Ria Financial v. Red Soul,WIPO Case No. D2013-1690; SAP AG v. Subba Rao Parvathaneni,WIPO Case No. D2010-1813). Finally, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012 2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's PALLADIUM trademarks, and paragraph 4(a)(i) of the Policy is established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including: “(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 Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions. The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating his rights or legitimate interests in the Disputed Domain Name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted providing arguments or evidence to the contrary. Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization in any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademarks PALLADIUM. A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903 (“Oki Data”), including: - the respondent must actually be offering the goods or services at issue; - the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); - the site itself must accurately disclose the respondent’s relationship with the trademark owner; and - the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name. In this particular case, it is well proven and evidenced by the Complainant that the Disputed Domain Name used to resolve to an online shop of the Respondent, as shown in the Annex 21 of the Complaint. On such website, the Panel finds the Respondent did not place any statement or disclaimer disclosing accurately its relationship with the Complainant. Further, the website under the Disputed Domain Name also contained the Complainant’s PALLADIUM logo as well as its product images. With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy. Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name. Further, there is also no evidence showing that the Respondent operates any bona fide business or organization under the Disputed Domain Name. Therefore, it is not evidenced that the Respondent is identified by “palladiumbootcanada” or that the Respondent has any right in it. Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including: “(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively in other circumstances. The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions. The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s PALLADIUM trademarks have been registered in a variety of jurisdictions around the world. In addition, the Complainant’s PALLADIUM trademarks have been put in use for a long period of time and gained certain reputation in the sector of footwear. The Complainant’s PALLADIUM trademarks and its domain name The Disputed Domain Name comprises the PALLADIUM trademarks in its entirety, adding the non-distinctive elements “boot” and “canada” at the end. Given the extensive use of the PALLADIUM trademarks for footwear products by the Complainant, which occurs in numerous countries, and that the element “boot” directly refers to the products and business field of the Complainant, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its PALLADIUM trademarks when it registered the Disputed Domain Name, and the Panel considers the registration is an attempt by the Respondent as to take advantage of the Complainant’s goodwill. On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is resolving to an inactive website. However, it is well proven and evidenced by the Complainant that the website under the Disputed Domain Name used to offer the footwear products branded with the Complainant’s PALLADIUM trademarks. In addition to the adoption of the Complainant’s PALLADIUM trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used the Complainant’s trademarks and product images on the website. The Panel takes the view that any Internet users seeking to purchase the Complainant’s PALLADIUM products would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant, while no such connection exists in fact. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent. Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established. 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 Pham Nghiem Xuan Bac
Sole Panelist
Date: June 3, 2021
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