The Complainants are On AG, Switzerland, and On Clouds GmbH, Switzerland, both represented by Rentsch Partner AG, Switzerland.
The Respondents are Nguyen Luu, Viet Nam, Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland, Vuong Hoang, Viet Nam, AN NGUYEN, NEO CORP., Viet Nam, and Ngoc Tam Nguyen, Viet Nam, all represented by Nguyen Trung Luu, Viet Nam. 2. The Domain Names and Registrars
The disputed domain names The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on June 1, 2021. On June 1, 2021, the Center transmitted by email to each of the Registrars a request for registrar verification in connection with their respective disputed domain names. On June 2, 2021, each of the Registrars transmitted by email to the Center its verification responses in which it disclosed registrant and contact information for the disputed domain names that differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainants on June 2, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amended Complaint on June 4, 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 Respondents of the Complaint, and the proceedings commenced on June 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2021. The Response was filed with the Center on June 29, 2021. The Center appointed David H. Bernstein as the sole panelist in this matter on July 7, 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. Procedural Matters A. Consolidation of Complainants The Complaint lists two entities as Complainants – On AG and On Clouds GmbH. Although the Complainants have not addressed whether consolidation of the Complainants is appropriate, the Panel has considered whether to permit the Complainants to proceed together in this proceeding. The Complainants’ Pursuant to paragraph 3(c) of the Rules, the Complainants request consolidation of the Respondents. Although the four Respondents’ names and respective contact information (to the extent they are accurate) as disclosed by the Registrars are different, the Complainants have alleged facts that, they assert, show that these Respondents are acting in concert in their registration of the disputed domain names and in their operation of the websites to which the disputed domain names resolve. First, all four disputed domain names are similar, containing the phrase “oncloud.” The websites at the disputed domain names Although the disputed domain name That the websites to which the dispute domain names resolve look so similar and/or list overlapping corporate identities in the “About Us” pages is sufficient to support a finding that these Respondents are sufficiently related to make consolidation appropriate. That conclusion is reinforced by the fact that the Respondents have not opposed consolidation; to the contrary, all four Respondents filed a single Response using the same representative. Further, in their Response, the Respondents discussed the four disputed domain names as if they all were within their common control. The Panel therefore concludes that it is appropriate to allow the Complainants to file this Complaint against these consolidated Respondents. See WIPO Overview 3.0, paragraph 4.11.2 (consolidation appropriate against multiple respondents where the evidence shows that the websites to which the disputed domain names resolve are under common control of the respondents and where consolidation would be fair and equitable to the parties). 5. Factual Background The Complainants are Swiss providers of sports apparel and shoes. According to the trademark registrations for CLOUD and ON, On Clouds GmbH hold the rights to both trademarks. The Complainants registered their International trademark ON (registration number 1050016) in Switzerland on April 21 2010, for “clothing, footwear, headgear” and “games, toys, excluding electronic toys; gymnastic and sporting articles included in this class; decorations for Christmas trees; playing cards,” and extended that mark to many countries through the Madrid Protocol, including Viet Nam. The Complainants similarly registered the International trademark CLOUD (registration number 1361124) in Switzerland on May 4, 2017, for the same categories, and extended that protection to many countries, including Viet Nam. The Complainants have registered additional trademarks using variations of CLOUD for their shoes including CLOUDFLOW, CLOUDRIDER, and CLOUDTEC; they also use the tagline “Run on Clouds” on their website. The Complainants are headquartered in Zurich, Switzerland, and have offices around the world, including in Viet Nam. The Complainants have over 6,500 retail stores in over 50 countries, and has won various international design and technology awards. They are an “Official Partner” of the Swiss Olympic team. The Respondents are Nguyen Trung Luu, Tam Ngoc Nguyen, Vuong Hoang, and An Nguyen of Vietnam. The authorized representative for all four Respondents is Nguyen Trung Luu. The Respondents registered the disputed domain names The Complainants contend that the disputed domain names incorporate the Complainants’ ON and CLOUD trademarks, and that the disputed domain names are confusingly similar to their trademarks. The Complainants argue that the descriptive words “walk”, “walks,” “care,” and “wear” that the Respondents added to the term “oncloud” in the disputed domain names does not distinguish the disputed domain names from the Complainants’ marks. The Complainants contend that the Respondents have no legitimate rights or interests in the disputed domain name. The totality of the Complainants allegations in this regard are as follows: “The Respondents do not have any bona fide interest to use the domain names. The domains were registered very recently in August, September and December 2020 and in Mach 2021, whereas the trademarks of the Complainants are well-known and have long been protected.” The Complainants maintain that the Respondents registered and are using the disputed domain names in bad faith because the Respondents are using the disputed domain names for websites at which they sell sneakers and other products in competition with the Complainant’s products, which will confuse Internet users into believing that these websites or the products sold on the websites come from or are otherwise related to the Complainants. B. Respondent The Respondents contend that they have legal rights to the disputed domain names. Although they do not dispute the Complainants’ trademark rights, they contend that the disputed domain names are not confusingly similar to the Complainants’ trademarks because the trademarks always appear separately from each other (e.g., ON or CLOUD), whereas, in the disputed domain names, the Respondents use only the combined term “oncloud.” Elsewhere in their Response, though, the Respondents concede that their trade names and trademarks “may be quite similar to Complainant’s trademark” . The Respondents argue that, despite any similarity between the disputed domain names and the Complainant’s trademarks, their goods are completely different and therefore confusion is not likely. The Respondents point to the diversity and large selection of products on their website, which includes shoes, clothing, fashion accessories, and more, targeting a broad range of both men and women, as a distinguishing element between the disputed domain names and the Complainants’ trademarks. The Respondents further argue that, because they do not use the Complainants’ logo on their website or products, it is unlikely that consumers will be confused. They also suggest that consumers will not be confused (or perhaps they mean to argue that any confusion will not harm the Complainants) because they regularly perform quality control checks of their products, which come from reputable factories in Viet Nam and China. The Respondents next contend that they have rights and legitimate interests in the disputed domain names because they registered the disputed domain names before the Respondents received any notice of this dispute. The Respondents allege they had no knowledge of the Complainant’s rights in the trademarks because the Complainants are in Switzerland and the Respondents are in Viet Nam. In addition, the Respondents note, they did not use any marketing materials or product pictures related to the Complainants, which shows that their use of the “oncloud” name is a bona fide use. The Respondents further argue that, even if they have acquired no trademark or service mark rights in “oncloud”, they are commonly known by the disputed domain names by virtue of their use of the disputed domain names for their e-commerce websites and that they therefore are making a legitimate use without intent to mislead or divert customers from the Complainants’ products. Lastly, they reassert that, because they fully communicate to their customers the origins of their products, there is clearly a distinction between their products and the Complainants’ products, and thus their use of the disputed domain names is not confusing but rather is legitimate. With respect to bad faith, the Respondents assert that the disputed domain names were not registered for the purposes of selling, renting, or otherwise transferring the disputed domain name registration to the Complainants. The Respondents also assert they did not register the disputed domain names to compete with the Complainant nor to attract customers by creating a likelihood of confusion with the Complainants’ marks. They again point to the diversity of products offered on their websites, noting the presence of women’s clothing and apparel, which are goods in which the Complainants do not have trademark registrations. Finally, they argue that they registered the disputed domain names using “oncloud,” which was intended to reflect their slogan “Beyond the 9th cloud,” presumably meaning that their footwear would make customers feel as if they were walking on clouds. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that, to obtain transfer of a domain name, a complainant must prove each of the following: (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 respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainants’ trademark registrations establish that the Complainants own trademark rights in the marks ON and CLOUD. As the WIPO Overview 3.0 notes in section 1.2, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” The Respondents do not dispute the validity of the Complainants’ trademarks, but instead argue that, because they sell different products and do not use the Complainants’ logo, the disputed domain names are not confusingly similar. They also argue that there is no confusing similarity because they use the terms “on” and “cloud” together, e.g., “oncloud”, whereas the Complainants use those marks separately. Those arguments are without merit. The fact that the Respondents are combining two of the Complainants’ trademarks in the disputed domain names does not immunize those domain names from a finding of confusingly similarity. If anything, it exacerbates the confusion, since the disputed domain names contain not one, but two, of the Complainants’ trademarks. WIPO Overview 3.0, section 1.12 (the combination of two different trademarks in a domain name is not sufficient to avoid a finding of confusing similarity). Moreover, it is factually incorrect to say that the Complainants only use the marks separately. The ON trademark is the house brand for the Complainants’ products, the CLOUD mark is used to designate certain of the sneakers with their lines. Those CLOUD sneakers do bear the ON trademark, which means that the Complainants do, in fact, use the ON and CLOUD marks in connection with some of their products (even if they do not use the combined term “oncloud”). See, e.g., “www.on-running.com/en-us/collection/cloud and https://www.zappos.com/on-cloud”. Equally irrelevant are the Respondents’ arguments about the differences between their and the Complainants’ logos and products. The assessment of whether the disputed domain names are confusingly similar to the Complainants’ trademarks does not include any assessment of the Respondents’ website or products; rather, it involves a relatively straightforward comparison of the disputed domain names themselves with the relevant trademarks. See WIPO Overview 3.0, section 1.7. Whether or not the Respondents’ products are similar to the Complainants’ products, and whether the Respondents use the Complainants’ logo on their products or on the website, is largely irrelevant to this test. Id., section 1.15 (“The content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element.”). The Respondents use of the additional dictionary words “walk,” “walks,” “care,” and “wear” in the disputed domain names does not prevent a finding of similarity or to change this analysis. See WIPO Overview 3.0, section 1.8 (“where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”). Accordingly, the Panel finds that the disputed domain names are confusing similar to marks in which the Complainants’ have rights, and that the Complainants have carried their burden of proof under paragraph 4(a)(ii of the Policy. B. Rights or Legitimate Interests The Respondents argue that they have rights and legitimate interests in the disputed domain name pursuant to paragraph 4(c)(i) of the Policy because, before any notice of the dispute, the Respondents have been using the disputed domain name in connection with a bona fide offering of commercial goods. But, as the Complainants properly note, a use cannot be deemed bona fide if the disputed domain names constitute trademark infringement. Sai Machine Tools Pvt. Ltd. v. Mr. Sudhir Jaiswal, Shree Sai Extrusion Technik Pvt. Ltd,WIPO Case No. D2018-2560 (“bona fide use is predicated on honest adoption of the name” and respondent failed to show such honest adoption; rather, respondent’s use was infringing and therefore not bona fide); Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co., Forum Claim No. FA0303000149188 (where respondent adopted domain name with actual knowledge of complainant’s trademark and used the domain name in a way likely to cause confusion, the offering of services under such a mark is infringing, not bona fide). Although the Panel is not an expert in the law of Viet Nam and neither party has briefed the applicability of Viet Nam law to this assessment, it seems self-evident to the Panel that the use of the term “oncloud” for sneakers and other footwear and apparel would infringe the Complainants’ ON and CLOUD trademark registrations in Viet Nam for those same types of goods. The use of “oncloud” also would violate the Complainants’ trademark rights in other countries where the Respondents’ sell their products via their websites and where the Complainants’ have trademark rights, such as the United States of America (“United States”) and the United Kingdom, where the Respondents have offices. The Panel notes that the Respondents are specifically targeting the United States with their websites, which list shipping times to the United States via the United States Postal Service, list prices in United States Dollars, and include a California Privacy Rights disclosure. There is no doubt that the disputed domain names and their use of “oncloud” in connection with the sale of footwear infringes the Complainants’ trademark rights in the United States. To the extent the Respondents are suggesting that they are not responsible for any trademark infringement because they never heard of the Complainants or their trademarks given that they are based in Viet Nam and the Complainants are based in Switzerland, that assertion is not credible. The Complainants have alleged that they have offices in Viet Nam (an assertion to which the Respondents have not responded), the Complainants’ brands are internationally known, and the Respondents are in the apparel industry and therefore must have been aware of internationally known brands like the Complainants’. Moreover, a simple trademark or Internet search would have revealed the Complainants, their trademarks and their products. At the minimum, the Respondents, as participants in the apparel industry, should have known of the Complainants and their trademark rights. WIPO Overview 3.0, section 3.2.2. The Respondents also suggest that their use is not infringing because they selected the disputed domain names because of the descriptive meaning of the terms “on” and “cloud.” The Panel acknowledges that some of the Respondents’ websites make references to “oncloud” when describing the “Oncloud story” and state that they have designed their shoes to make consumers feel like they are “walking on clouds.” See, e.g., “/www.oncloudwalks.com/pages/about-us”. The Respondents have not, however, credibly claimed to have come up with the “oncloud” term independent of the Complainants’ ON and CLOUD trademarks. In any event, even if the Respondents want to make a descriptive use of the phrase “walking on clouds” in describing their products, See, e.g., 15 U.S.C. § 1115(b)(4); United States Shoe Corp. v. Brown Grp., Inc., 740 F. Supp. 196, 198 (S.D.N.Y. 1990) (advertiser can make fair use of descriptive phase “feels like a sneaker” in advertising copy despite plaintiff’s registered trademark for the same phrase), that does not give the Respondents the right the use “oncloud” as a brand name or in the disputed domain names, as they do both for their shoes and their e-commerce sites. Even putting aside the question of trademark infringement, the Panel finds for all the reasons set out above (as well as below under the third element analysis) that the Respondent’s conduct clearly runs afoul of the principles articulated in sections 2.4 and 2.5 (including subsections) of the WIPO Overview. In sum, because the Respondents use of the term “oncloud” is infringing and falsely suggests an affiliation with the Complainant, it cannot be bona fide, and the Respondents have failed to come forward with evidence showing rights or legitimate interests in the disputed domain names. The Panel finds that the Complainants have established that the Respondents lack any rights or legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b)(iv) of the Policy states that the following is one example of circumstances that would support a finding of registration and use of a domain name in bad faith: (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location. The Panel’s finding not only that the Respondents are infringing the Complainants’ trademarks but also runs afoul of principles articulated in sections 2.4 and 2.5 (including subsections) of the WIPO Overview is dispositive of this issue. The Respondents registration of the disputed domain names, and their use of the ON and CLOUD trademarks in the disputed domain names, will inevitably attract Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainants’ marks. That is paradigmatic bad faith under the Policy. The Respondents try to avoid this result by arguing that confusion is unlikely because their “goods are completely different from Complainants’ goods such as through pictures, designs, colors and title name.” They also argue that “all of Respondents’ products do not use any logo of Complainants while on the Complainants’ store, all products are marked logo trademark. […] Therefore, the possibility of confusing customers is highly unlikely.” The Panel finds that given the composition of the disputed domain names this does not avoid confusion. That the Respondents sneakers and other products sold under the “oncloud” name have a different design or a different logo does not avoid a likelihood that consumers will confuse these products, and the Respondents’ websites generally and the disputed domain names in particular, as coming from, or being related to, the Complainants and their ON and CLOUD trademarks. The Panel therefore concludes that the Respondents registered and used the disputed domain names 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 disputed domain names David H. Bernstein
Sole Panelist
Date: July 28, 2021
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