The Complainants are On AG (“First Complainant”) and On Clouds GmbH (“Second Complainant”), Switzerland, represented by Rentsch Partner AG, Switzerland.
The Respondents are Domain Admin, Whoisprotection.cc, Malaysia; Kerstin Frankfurter, Germany; Name Redacted, Canada; Name Redacted, Canada; Name Redacted, Canada; Casey Williams, United States of America (“United States”); Name Redacted, Canada.1 2. The Domain Names and Registrars
The disputed domain name The disputed domain names The disputed domain names The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2021. On the same day, the Center transmitted by email to the Registrar requests for registrar verification in connection with the disputed domain names. On March 26, 27, and 29, 2021, the Registrar transmitted by emails to the Center its verification responses disclosing registrant 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 the Complainant on March 29, 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 amended Complaint on April 1, 2021. 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 the Respondent of the Complaint, and the proceedings commenced on April 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. The Center received email communications on April 16, 17, 23, and 27, 2021, from four individuals named as Respondents, claiming that their contact information had been used without their authorization for purposes of registering the disputed domain names. The Written Notice of the Complaint could not be delivered to the other two individuals named as Respondents because their respective contact addresses were invalid. The Written Notice of the Complaint was delivered to the other Respondent, Domain Admin, Whoisprotection.cc, but it did not submit any response. The Complainant sent two unsolicited supplemental filings to the Center on May 5, 2021, and May 6, 2021, respectively, which included requests to add the domain names The Center appointed Matthew Kennedy as the sole panelist in this matter on May 12, 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. Upon its appointment, the Panel decided to accept the Complainant’s two supplemental filings and to grant the requests therein to add the domain names Accordingly, the Panel issued Procedural Order No. 1 on May 20, 2021, giving the Respondents seven days to respond to the Complainant’s two supplemental filings, and extending the due date for the Panel’s decision by seven days to June 3, 2021. The Respondents did not submit any response to the Complainant’s supplemental filings. Accordingly, on May 28, 2021, the Center notified the default of those Respondents who had not replied to any communication from the Center in this proceeding. 4. Factual Background The Complainants produce sports apparel and shoes, in particular running shoes. Their products are sold at over 6500 retail stores in over 50 countries and at the Complainants’ online store associated with the domain name - International trademark registration No. 1050016 for ON, registered on April 21, 2010, specifying footwear, shoes and other goods in classes 25 and 28; - International trademark registration No. 1185372 for ON RUNNING, registered on October 25, 2013, specifying footwear, shoes and other goods in classes 25 and 28; - International trademark registration No. 1361124 for CLOUD, registered on May 4, 2017, specifying footwear, shoes and other goods in classes 25 and 28; - United States trademark registration No. 5366978 for CLOUDRUSH, registered on January 2, 2018, specifying footwear, shoes and other goods and services in classes 25, 28, and 42; and - International trademark Registration No. 1503051 for a figurative mark (the “ON logo”), registered on September 24, 2019; specifying footwear, shoes and other goods in classes 9, 18, 24, 25, and 28. The above trademark registrations are all in effect. The international trademark registrations designate multiple jurisdictions. The Respondents are named as a privacy protection service with respect to four disputed domain names and six individuals with respect to the other six disputed domain names. The disputed domain names were registered on the following dates: Registration date Disputed domain name November 19, 2020 December 8, 2020 December 12, 2020 December 15, 2020 January 15, 2021 February 2, 2021 February 4, 2021 February 22, 2021 April 22, 2021 April 27, 2021 The disputed domain names formerly resolved to websites that prominently displayed the Complainant’s ON logo and offered for sale what purported to be the Complainant’s shoes for men and women. The websites were in different languages and prices were displayed in different currencies. At the time of this Decision the disputed domain names no longer resolve to any active websites; rather, they are passively held. 5. Parties’ Contentions A. Complainant The disputed domain names are confusingly similar to one or more of the Complainants’ trademarks for ON, ON RUNNING, CLOUD, and CLOUDRUSH. The disputed domain names also incorporate descriptive terms and geographic terms that do not help distinguish the disputed domain names from these trademarks. The Respondents have no rights or legitimate interests with respect to the disputed domain names. The Respondents have no bona fide interest in using the disputed domain names. The disputed domain names were registered and are being used in bad faith. The same fake online shop is being operated on all disputed domain names. These shops are copies of the Complainants’ original online shop. They contain the Complainants’ logo, product photos and descriptions copied from the Complainants’ original online shop. The fake online shops impersonate the Complainants by using their name and logo and there is no indication that they are not operated by the Complainants. The online shops do not have an imprint or “about us” section. The “contact us” page contains solely a form without any further information. These fake online shops form part of a large number of fake online shops, operated under various domain names. B. Respondent Four of the individuals named as Respondents advised that their contact information had been used without their authorization for the purposes of registering the disputed domain names. Otherwise, the Respondents did not reply to the Complainant’s contentions. It should be recalled that the contact address information for the other two individuals named as Respondents was invalid. 6. Discussion and Findings 6.1. Preliminary Issues A. Consolidation: Multiple Complainants The Complaint and the amended Complaint were both filed by two complainants. The First Complainant is part of the same corporate group as the Second Complainant, which owns the trademark registrations set out in Section 4 above. The Panel finds that the Complainants have a common grievance against the Respondents and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated. B. Supplemental Filings and Addition of Domain Names The Complainant made two unsolicited supplemental filings after the notification of the amended Complaint but prior to the appointment of the Panel. Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447. In its supplemental filings, the Complainant requested the addition of two domain names to the current proceeding and submitted facts and arguments regarding those domain names. The Respondents did not comment on the Complainant’s supplemental filings. The Panel observes that (a) the proposed additional domain names were registered on April 22 and 27, 2021, respectively, after the notification of the amended Complaint on April 13, 2021; (b) the proposed additional domain names, and the websites to which they resolve, concern the same trademark rights and raise the same factual issues as the existing disputed domain names and the websites to which they resolve; (c) the registrant of the proposed additional domain names is the registrant of certain existing disputed domain names; and (d) the Respondents were given a reasonable opportunity to respond to the supplemental filings without unduly delaying the proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.12.2. The amended Complaint initiates disputes in relation to nominally different domain name registrants. The Complainant alleges that all the disputed domain names are under common control and requests consolidation of the disputes against the disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s consolidation request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 and WIPO Overview 3.0, section 4.11.2. As regards common control, the Panel notes that the disputed domain names were all registered within a relatively short period of time between November 2020 and April 2021. All the disputed domain names incorporate one or more trademarks registered by the Complainant; in all but one case, they incorporate the ON trademark as their respective initial elements. The websites associated with all the disputed domain names display the Complainant’s ON logo, all are very similar in their layout, some display identical photographs, and all sell the same products. Four disputed domain names are registered in the name of the same privacy service, including two that were registered during this proceeding, after the notification of the amended Complaint. Although the other six disputed domain names are registered in the names of various individuals, four of the named individuals claim that their contact information was used without their authorization, the contact addresses of the other two named individuals are invalid, and there is a discernible pattern in their six contact email addresses, i.e., ([name] [number]@yeah.net). It should be noted that the email user names are not those of the individuals named as disputed domain name registrants. In these circumstances, the Panel is persuaded that all ten disputed domain names are under common control. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain names are 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 disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the ON trademark, the ON RUNNING trademark, the CLOUD trademark, and the CLOUDRUSH trademark. All the disputed domain names wholly incorporate one or more of the Complainant’s trademarks as their respective initial elements. The disputed domain name All the disputed domain names incorporate one or more descriptive words or geographical terms, or both, after the trademark or trademarks. The descriptive words are variously “shoe”, “shoes”, “schuhe” (meaning “shoes” in German), “sko” (meaning “shoes” in Danish), “outlet”, “sales”, “shop” and “tilbud” (meaning “offer” in Danish), while the geographic terms are “australia”, “canada”, “ireland”, “nz” (an abbreviation for “New Zealand”), “portugal” and “southafrica”. These elements do not avoid a finding of confusing similarity between the disputed domain names and the Complainant’s trademarks as one or more of the ON, ON RUNNING, CLOUD, and CLOUDRUSH trademarks is clearly recognizable within each disputed domain name. See WIPO Overview 3.0, section 1.7. The only other element in each disputed domain name is a generic Top-Level Domain (“gTLD”) suffix, in each case “.com”. As a technical requirement of registration, a gTLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The disputed domain names, which all incorporate one or more of the Complainant’s trademarks, formerly resolved to websites that prominently displayed the Complainant’s ON logo and offered for sale what purported to be the Complainant’s shoes. It is clear from the Complaint that the Complainant has not licensed or otherwise authorized the Respondent to use its trademarks. Whether or not the shoes are genuine or counterfeit, the websites gave the false impression that they were operated or endorsed by, or affiliated with, the Complainant. No disclaimer appeared on the websites to clarify that the Respondent and its website had no relationship to the Complainant; in fact, the evidence does not show that the websites identified their operators at all. At the time of this decision, the disputed domain names are passively held. In these circumstances, the Panel does not consider either use to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is either use a legitimate noncommercial or fair use of the disputed domain names for the purposes of paragraph 4(c)(iii) of the Policy. The Respondent is identified in the Registrar’s WhoIs database as a privacy service and as individuals, none of which is named with a disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.” The disputed domain names were registered in 2020 and 2021, after the registration of the Complainant’s trademarks. All the disputed domain names wholly incorporate one or more of the ON, ON RUNNING, CLOUD, and CLOUDRUSH trademarks. Five (including the two that incorporate the ON mark with no other mark) also incorporate a word meaning “shoe” or “shoes”, which demonstrates an awareness of the Complainant’s products. The disputed domain names formerly resolved to websites displaying the Complainant’s ON logo and the Complainant’s products. Given these circumstances, the Panel finds that the Respondent knew of the Complainant and its ON, ON RUNNING, CLOUD, and CLOUDRUSH marks at the time that it registered the disputed domain names. The Respondent formerly used the disputed domain names, that wholly incorporate one or more of the Complainant’s ON, ON RUNNING, CLOUD, and CLOUDRUSH trademarks, to resolve to websites that offered shoes for sale and gave the false impression that they were operated or endorsed by, or affiliated with, the Complainant. Given these circumstances and the findings in section 6.2B above, the Panel considers that the disputed domain names were intended to attract Internet users by creating a likelihood of confusion with the Complainant’s ON, ON RUNNING, CLOUD, or CLOUDRUSH trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a product or service on those websites within the terms of paragraph 4(b)(iv) of the Policy. The Panel notes that the use of the disputed domain names has recently changed, and that they no longer resolve to an active website. This change of use does not alter the Panel’s conclusion and may in fact constitute a further indication of bad faith. Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 names Matthew Kennedy 1 The names and contact details of four Respondents appear to have been used without their consent when registering the disputed domain names
PDR Ltd. d/b/a PublicDomainRegistry.com, NameSilo, LLC, Netim SARL, and Alibaba.com Singapore E-Commerce Private Limited are separately and collectively referred to below as the “Registrar”. 3. Procedural History
Therefore, the Panel (i) considers the Complainant’s two supplemental filings to be admissible and will take them into consideration as part of the evidence on the record according to their relevance, materiality and weight; and (ii) decides to add the disputed domain names
Sole Panelist
Date: May 28, 2021
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