The Complainant is Columbia Sportswear Company, United States of America (“United States”), represented by Strategic IP Information Pte Ltd., Singapore.
The Respondents are Lea Biermann, Germany; Domain Admin, Whoisprotection.cc, Malaysia; and Client Care, Web Commerce Communications Limited, Malaysia.
2. The Domain Names and RegistrarsThe disputed domain names
The disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2021. On September 23, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 23, 2021 and September 24, 2021, the Registrars transmitted separately by email to the Center their verification responses disclosing registrants 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 September 27, 2021, providing the registrants 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 October 6, 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 October 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 1, 2021.
The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on November 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.
4. Factual BackgroundThe Complainant is active in designing, sourcing, marketing, and distributing outdoor and active lifestyle apparel, footwear, accessories, and equipment under the trademarks COLUMBIA and COLUMBIA SPORTSWEAR COMPANY. The Complainant distributes its products in approximately 100 countries and operates a network of branded retail stores in North America, South America, Europe, and Asia. The Complainant has used the trademark COLUMBIA for over 80 years.
The Complainant has rights in numerous trademark registrations throughout the world for the trademarks incorporating the term “columbia”, among which:
- United States trademark registration No. 2,047,397 for COLUMBIA, registered on March 25, 1997, in classes 18 and 25;
- European Union trademark registration No. 004152294 for COLUMBIA SPORTSWEAR COMPANY, registered on December 15, 2005, in classes 3, 8, 9, 11, 18, 20, 21, 24, and 25.
The disputed domain names were registered on the following dates:
The disputed domain names resolve to websites purporting to offer COLUMBIA products. Such websites are similar in appearance to the Complainant’s official website at “www.columbia.com”, albeit in different languages. The COLUMBIA trademark and logo of the Complainant is displayed on the top left corner of each page of such websites, while the COLUMBIA SPORTSWEAR COMPANY trademark and logo of the Complainant is displayed on the bottom left corner of each page.
Furthermore, all websites to which the disputed domain names resolve have an identical “login” page, likewise featuring the Complainant’s trademark and logo in the top left corner, and sent out the same acknowledgment emails (in the language of the website at issue) following the setup of an account. These emails provided an identical email address “[…]@gmail.com” as the contact address of the store owner. Each email was purportedly signed by a “emily”.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain names reproduce its well-known trademark COLUMBIA. The words added to such trademark in the disputed domain names do not serve to distinguish the disputed domain names from the Complainant’s trademark.
The Complainant further contends that the Respondents do not have rights or legitimate interests in the disputed domain names. The Complainant has not authorized the Respondents to use its COLUMBIA trademark in any manner, including in the disputed domain names.
The Complainant finally contends that given the well-established reputation of its trademark COLUMBIA, the Respondents were aware of it at the time of registration of the disputed domain names. The Complainant also alleges that the Respondents use its trademark COLUMBIA solely to portray the disputed domain names as being associated with or related to the Complainant, its products and activity. According to the Complainant, the contents of the websites to which the disputed domain names resolve show a clear attempt on the part of the Respondents to pass off all the websites as being associated with or endorsed by the Complainant.
B. RespondentsThe Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. ConsolidationThe Complainant requests the consolidation of the Complaint against multiple domain name disputes in application of paragraph 10(e) of the Rules. According to paragraph 10(e) of the Rules, “[a] Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”.
“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. […] Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of […] (ii) the registrants’ contact information including email address(es), […] (iv) the content or layout of websites corresponding to the disputed domain names […].” See section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In the present case, according to the evidence on the record, all disputed domain names resolve to websites with an identical layout and very similar contents. Once a user account was setup, all such websites generated an almost identical acknowledgment email (albert in different languages) indicating the same email address as the address for contact of the website’s owner. Each email was purportedly signed with the first name “emily”, without a capital “e”.
The Panel is of the view that under these circumstances, there is sufficient evidence showing that the disputed domain names are under common control. The Respondents have not submitted any Response and have not disputed the Complainant’s request for consolidation. The Panel holds therefore that the consolidation would be fair and equitable to all Parties, and accepts the Complainant’s consolidation request.
6.2. Substantive IssuesAccording to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent 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 domain name registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has rights in the trademark registrations for the trademark COLUMBIA.
The disputed domain names reproduce the Complainant’s trademark in its entirety with no alteration and combine this trademark with, respectively, the suffixes “boltok”, “-greecer”, “precio”, “outletdk”, “inofferta”, “outletireland”, “-australia”, and “-polska”.
UDPR panels consider that “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”. See section 1.8 of the WIPO Overview 3.0.
In the present case, the trademark COLUMBIA is clearly recognizable in the disputed domain names. The mere addition of the above-mentioned suffixes does not change the overall impression produced by the disputed domain names and does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark.
UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com” in this case, is viewed as a standard registration requirement and is typically disregarded when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant has not authorized the Respondents to use its trademark in the disputed domain names or otherwise, and there is no evidence indicating that the Respondents are commonly known by the disputed domain names.
The Respondents appear to be selling COLUMBIA-branded products on the websites operated under the disputed domain names. The Complainant states in the Complaint that the Respondents’ websites do not offer “legitimate products”, but it is unclear whether the Complainant means that the Respondents are not authorized sellers or whether it means that the products are not genuine. Absent any express allegation by the Complainant that the products on the Respondents’ websites are counterfeit goods, or that the Respondents are in fact not selling the goods displayed on their websites, the Panel has to assume that they may be genuine COLUMBIA products and that the Respondents are indeed offering them for sale. Even though the products sold on the websites at the disputed domain names may be genuine COLUMBIA products, under the circumstances discussed below, the Panel finds that the Respondents have not used the disputed domain names for a bona fide offering of good or services.
“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name.” See section 2.8 of the WIPO Overview 3.0. UDRP panels apply the so-called “Oki Data test”, which comprises the following cumulative requirements, in order to assess the legitimate character of the use of a domain name in connection with the sale of a complainant’s goods (Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903):
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
In the present case, the Respondents appear to be selling products of the Complainant, and there is no evidence on the record indicating that the Respondents would be selling goods of other brands. However, the screenshots of the websites to which the disputed domain names resolve do not feature any disclaimer concerning the relationship between the Respondents and the Complainant. In all websites, the COLUMBIA trademark and logo of the Complainant is displayed in the top left corner of each page, creating the impression of an official website, operated or at least endorsed by the Complainant.
By failing to accurately and prominently disclose the relationship, or rather lack thereof with the Complainant, and by displaying the Complainant’s trademark and logo prominently on all the front pages of their websites, the Respondents convey the false impression that the Respondents were somehow affiliated with the Complainant.
The Panel finds accordingly that the requirements of the “Oki Data test” are not met and that the Respondents do not have rights or legitimate interests in the disputed domain names.
The Complainant has thus satisfied the condition set out in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithGiven the distinctive character of the COLUMBIA trademark in the fashion industry and the use that the Respondents made of the disputed domain names, the Panel accepts that the Respondents most probably knew of the Complainant’s trademark when registered the disputed domain names.
Because the Respondents did not accurately and prominently disclose their relationship with the Complainant on their websites, and because the Respondents have used prominently the trademark and logo of the Complainant on their websites, the Panel finds it likely that the Respondents have intentionally created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites for commercial gain. This is a circumstance of registration and use of a domain name in bad faith according to paragraph 4(b)(iv) of the Policy.
For the reasons set out above, the Panel finds that the Respondents have registered and used the disputed domain names in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.
7. 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
Anne-Virginie La Spada
Sole Panelist
Date: November 29, 2021