The Complainant is On AG and On Clouds GmbH, Switzerland, represented by Rentsch Partner AG, Switzerland.
The Respondent is Web Commerce Communications Limited, Malaysia; Domain Admin, Whoisprotection.cc, Malaysia / Christin Schmidt, Germany; Sandra Naumann, Germany; Jana Papst, Malaysia.
2. The Domain Names and RegistrarsThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 13, 2021, the Center transmitted by email to the first and second Registrars a request for registrar verification in connection with the disputed domain name. On July 14, 2021, the second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. On July 15, 2021, the first Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 July 26, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 30, 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 August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on September 17, 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 BackgroundThe Complainant is a provider of sports apparel and shoes, with its headquarters in Zurich, Switzerland. Its products can be bought at over 6,500 retail stores, which are situated in more than 50 countries, or online through the Complainant’s website at “www.on-running.com”. The Complainant’s products have won various design and technology awards and have attracted the investment and/or endorsement of a number of
well-known sports personalities.
The Complainant’s principal brand is ON, which is often used in conjunction with a number of its other brands, including ON RUNNING and CLOUD. The Complainant has secured trade mark registrations for its brands in many countries, which include the following registrations;
- International Trade Mark for ON, registration number 1050016, registered on April 21, 2010, in classes 25 and 28, which is in force in numerous countries worldwide;
- International Trade Mark for ON RUNNING, registration number 1185372, registered on October 25, 2013, in classes 25 and 28, which is in force in Switzerland, the European Union, Mexico, Turkey, and China;
- International Trade Mark for CLOUD, registration number 1361124, registered on May 4, 2017, in class 25, which is in force in many countries worldwide.
The first disputed domain name and the fifth to tenth disputed domain names were registered on April 22, 2021. The second disputed domain name was registered on April 29, 2021, the third disputed domain name was registered on June 19, 2021, and the fourth disputed domain name was registered on June 16, 2021.
Each of the disputed domain names resolves to websites, which purport to be that of the Complainant and to sell the Complainant’s products. The layout, style, and content of each of the websites very closely follows that of the Complainant’s website. By way of example, each of the Respondent’s websites, in common with that of the Complainant, features, on the home page, the Complainant’s stylised ON logo at the top left of the page and a motivational strapline superimposed over a large, centrally positioned, photograph of a runner or runners. The products advertised for sale on subsequent pages each feature the Complainant’s logo and are described in the accompanying text as the Complainant’s shoes.
5. Procedural issue – Complaint filed against multiple RespondentsThe Complainant says that a complaint can be filed against multiple respondents if the domain names or corresponding websites in issue are subject to common control and consolidation would be fair and equitable to all parties. In support of its contention, the Complainant says that the websites to which each disputed domain name resolves are all identical. The second disputed domain name redirects to the website of the third disputed domain name, but, the Complainant says, this is in fact a further indicator of common control.
Whilst neither the Policy nor the Rules expressly provides for the consolidation of claims against multiple respondents into a single administrative proceeding, the principles applied by panels considering requests for consolidation are set out at section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This explains that: “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.” See also Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281.
All of the disputed domain names were registered within a few weeks of each other, six of them having been registered on the same date. They all resolve, directly or indirectly, to websites, in substantially identical form, each of which masquerades as the Complainant’s website and purports to sell the Complainant’s footwear. Moreover, the same two Registrars have been used for all registrations. These factors, in combination, point to the disputed domain names being under common control. Moreover, the Panel notes that the Respondent has not challenged the Complainant’s assertions.
In these circumstances, it is procedurally efficient, as well as fair and equitable to all parties, for the Complainant’s case in respect of all the disputed domain names to be dealt by means of a single Complaint. The Panel accordingly grants the Complainant’s request for consolidation.
6. Parties’ Contentions A. ComplainantThe Complainant says that each of the disputed domain names is identical or confusingly similar to a trade mark or service mark in which it has rights. The first to fourth disputed domain names incorporate the Complainant’s ON and CLOUD marks and the fifth to tenth disputed domain names incorporate the Complainant’s ON and ON RUNNING trade marks. All the disputed domain names combine these marks with geographical terms. The seventh disputed domain name includes the word “suomi”, which is a term used to denote the Finish language. The eighth disputed domain name incorporates the letters “au”, which are a widely recognised abbreviation for Australia. The remaining disputed domain names incorporate the full names of countries. The geographical term in each disputed domain name serves to convey the message that the Complainant’s products are being offered for sale in the country to which the term relates. The second and third disputed domain names additionally include the word “shoes” which is descriptive of the goods sold by the Complainant and does not distinguish these disputed domain names from the Complainant’s trade marks.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has no bona fide interest in using the disputed domain names, each of which was registered very recently, whereas the Complainant’s trade marks are well-known and have long been protected.
Lastly, the Complainant says that the disputed domain names were registered and are being used in bad faith. The websites to which the disputed domain names resolve are basically identical and form part of a large number of fake online shops. Each website comprises a copy of the Complainant’s online shop at its website “www.on-running.com”. In particular, each of them uses the Complainant’s logo in the top left corner as well as product photographs, in which the Complainant owns the copyright, and product descriptions, which have been copied from the Complainant’s websites. The Respondent’s online shops do not contain any indication that they are not operated by the Complainant. They do not have an “About Us” section and the “Contact Us” page simply contains a form without any further information.
The same fake online shops have already been considered in earlier decisions under the Policy relating to different domain names registered by the respondents in those proceedings, namely On AG and On Clouds GmbH, c/o On AG v. Stefan Neumann, Patrick Kalb, Lukas Ziegler, Katja Eberhardt; Mathias Hartman / Domain Administrator; Bettina Presser / Domain Admin, Privacy Protect LLC; Johanna Koehler / Domain Administrator; Mitja Schmidt / Domain Administrator; Helle Mynster / Domain Administrator; Tonnis Wolthuis / Domain Administrator,WIPO Case No. D2020-2943, and On AG and On Clouds GmbH v. Domain Admin, Whoisprotection.cc / Kerstin Frankfurter / Name Redacted / Name Redacted / Name Redacted / Casey Williams / Name Redacted,WIPO Case No. D2021-0925.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
7. Discussion and FindingsDealing, first, with the Respondent’s failure to file a substantive response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark 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 SimilarThe Complainant has provided details of its trade mark registrations for ON, ON RUNNING, and CLOUD, examples of each of these registrations having been provided above. It has thereby established its rights in these marks.
The Top Level Domain (“TLD”), in each disputed domain name, that is the “.com” component, is disregarded for the purposes of the comparison made under the first element, as it is a technical requirement of registration.
Each of the disputed domain names features either the Complainant’s ON RUNNING trade mark (which necessarily incorporates its ON trade mark) or its ON and CLOUD trade marks and, in each case, adds a geographical term. The second and third disputed domain names also include the word “shoes”. The third and fourth disputed domain names each feature a hyphen; this is positioned between two of the words within each of these disputed domain names and is of no significance for the purpose of the comparison under the first element.
None of the added content described above prevents the disputed domain names from being found confusingly similar to the Complainant’s marks. As explained at section 1.8 of the WIPO Overview 3.0: “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.” The Complainant’s marks are clearly recognizable within each of the disputed domain names. Moreover, the content at the websites associated with them establishes that the Respondent has sought to target the Complainant’s mark and rights; see section 1.15 of the WIPO Overview 3.0.
The Panel therefore finds that all the disputed domain names are confusingly similar to trade marks in which the Complainant has rights.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
It is evident from the Complainant’s evidence that the websites to which the disputed domain names resolve are fake websites, intended to confuse Internet users into believing that they are owned and operated by the Complainant. Such use does not comprise a bona fide offering of goods and services. In this respect, see the decision of the panel in Philipp Plein v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Norma Brandon, cheapphilippplein,WIPO Case No. D2015-1050; “The Respondent’s use of a domain name that is confusingly similar to the Complainant’s trade marks in order to attract Internet users looking for genuine products of the Complainant’s company and to offer them unauthorized copies instead is a ‘bait and switch’ strategy that lacks bona fides and does not give rise to rights or a legitimate interests under the Policy”. See also section 2.13.1 of the WIPO Overview 3.0 which explains that “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.
There is no evidence that the Respondent has been commonly known by the disputed domain names and the second circumstance under paragraph 4(c) of the Policy is therefore inapplicable. The third circumstance is also inapplicable; such use as the Respondent has made of the disputed domain names is commercial in character and their composition carries a significant risk of implied affiliation with the Complainant which prevents their use from being considered fair.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names and the burden of production shifts to the Respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names.
C. Registered and Used in Bad FaithEach of the disputed domain names is confusingly similar to either the Complainant’s ON and ON RUNNING or its ON and CLOUD trade marks and the only known use of them has been to resolve to websites which purport misleadingly to be owned or operated by the Complainant. It is therefore evident that the Respondent registered the disputed domain names with an awareness of the Complainant’s marks and with the intention of taking unfair advantage of them. As explained by the panel in Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc.,WIPO Case No. D2007-1833; “Substantial authority exists to the effect that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use”. The Panel therefore finds the Respondent’s registration of the disputed domain names to have been in bad faith.
Paragraph 4(b) of the Policy sets out, without limitation, 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. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The use to which the Respondent has put the disputed domain names falls within these circumstances in that the form and content of its websites will lead Internet users to believe that they are operated by, or with the authorization of, the Complainant. Such a belief will be reinforced because of the confusing similarity between the disputed domain names and the Complainant’s trade marks. The Respondent’s use of the disputed domain names in order to create the false impression of a connection with the Complainant’s business is in bad faith; see, by way of example, Richemont International SA v. brandon gill,WIPO Case No. D2013-0037. See also section 3.1.4 of the WIPO Overview 3.0: “Given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. The earlier decisions of UDRP panels to which the Complainant has referred in its submissions in respect of the third element tend to confirm that the registration and use of the disputed domain names is part of a broader scheme of fraudulent activity, but it is not necessary for the Panel to make a specific determination in this respect.
The Panel accordingly finds that the disputed domain names have been registered and are being used in bad faith.
8. DecisionFor 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,
Antony Gold
Sole Panelist
Date: October 1, 2021