The Complainant is Salomon S.A.S., France, represented by Nameshield, France.
The Respondents are Domain Admin, Whoisprotection.cc, Malaysia and Client Care, Web Commerce Communications Limited, Malaysia.1
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 19, 2021, the Registrar transmitted by email to the Center its verification response 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 October 20, 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 October 21, 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 November 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 29, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 13, 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 French outdoor sports equipment manufacturing company established in 1947. The Complainant produces products for numerous sports markets, including trail running, hiking, climbing, adventure racing, skiing and snowboarding in over 40 countries worldwide.
The Complainant is the owner of registered trademarks in numerous jurisdictions worldwide, including, but not limited to: SALOMON, International Trademark Registration No. 0375807, registered on November 24, 1970 in international classes 9, 12, 22, 25, 28 and 40; SALOMON, International Trademark Registration No. 0489108, registered on July 19, 1984 in international classes 6, 8, 9, 12, 16, 18 and 34; SALOMON, International Trademark Registration No. 0526127, registered on March 22, 1988 in international classes 1, 2, 6, 7, 8, 9, 12, 16, 18, 25, 28, 35, 36 and 41; and SALOMON, International Trademark Registration No. 0940740, registered on June 8, 2007 in international class 35 (hereinafter collectively referred to as the “SALOMON Mark”).
The Complainant registered the domain name
The Disputed Domain Names were registered on the following dates:
The Disputed Domain Names
The following are the Complainant’s contentions:
- the consolidation of the Respondents is appropriate in this proceeding since the Complaint relates to several Disputed Domain Names and the Disputed Domain Names or corresponding websites are subject to common control.
- the Disputed Domain Names are confusingly similar to the Complainant’s SALOMON Mark.
- the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.
- the Disputed Domain Names were registered and are being used in bad faith.
- the Complainant seeks the transfer of the Disputed Domain Names from the Respondents to the Complainant in accordance with paragraph 4(i) of the Policy.
B. RespondentsThe Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Preliminary Issue: Consolidation of the RespondentsThe Complainant has requested the consolidation of the Respondents in this proceeding. Pursuant to paragraph 3(c) of the Rules, “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Where a complaint is filed against multiple respondents, UDRP 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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281.
Here, the Panel finds that the Disputed Domain Names are under common control as the Respondent Whoisprotection.cc appears to be a privacy service provided by the Respondent Web Commerce Communications Limited pursuant to the Agreements, the Disputed Domain Names are registered through the same Registrar, the Respondents’ phone numbers provided by the Registrar are the same, all of the Disputed Domain Names were registered within a few months of each other, three having been registered on the same date, and three resolve to websites that are substantially identical, each of which impersonates the Complainant’s website and purports to sell the Complainant’s products. Moreover, the Panel notes that the Respondents have not challenged the Complainant’s request for consolidation.
Based on the above, the Panel concludes that it is procedurally efficient, as well as fair and equitable to all Parties, for all the Disputed Domain Names to be dealt with by means of a single Complaint. The Panel accordingly grants the Complainant’s request for consolidation.
6.2 Substantive IssuesParagraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names were registered and are being used in bad faith.
A. Identical or Confusingly SimilarThis element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to that trademark or trademarks. The Panel concludes that the Disputed Domain Names are confusingly similar to the SALOMON Mark as set forth below.
The Panel concludes that the Complainant has established rights in the SALOMON Mark based on its many years of use plus its registered trademarks in numerous jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondents have not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the SALOMON Mark.
The Disputed Domain Names
It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of another term. As stated in 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”. For example, numerous UDRP decisions have reiterated that the addition of a geographic term does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8; see also Gannett Co., Inc. v. Henry Chan,WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438 (the addition of the term “korea” in
Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.
Thus, the Panel concludes that the Disputed Domain Names are confusingly similar to the Complainant’s SALOMON Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate InterestsUnder the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
There is no evidence in the record suggesting that the Respondents have rights or legitimate interests in the Disputed Domain Names. The Complainant has not authorized, licensed, or otherwise permitted the Respondents to use the Complainant’s SALOMON Mark. The Complainant does not have any business relationship with the Respondents, nor are the Respondents making a legitimate noncommercial or fair use of the Disputed Domain Names. There is also no evidence that the Respondents are commonly known by the Disputed Domain Names or by any name similar to them, nor have they used or made demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services.
Based on the initial use made of the three Disputed Domain Names to resolve to websites that impersonated the Complainant’s website and purportedly displayed the Complainant’s products bearing the SALOMON Mark, the Panel finds that the Respondents are not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Names. It is unclear whether the Complainant’s products displayed on the three Disputed Domain Names’ resolving websites were genuine or counterfeit, although neither would be a bona fide offering of goods or legitimate use of the three Disputed Domain Names in the circumstances of this case because the websites did not accurately and prominently disclose the Respondents’ relationship with the Complainant. The remaining two Disputed Domain Names initially did not resolve to any active websites. 3
Moreover, the Panel finds that the nature of the Disputed Domain Names carries a risk of implied affiliation and cannot constitute fair use here, as they effectively suggest sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Names. The Respondents have not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel concludes that the Respondents do not have rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad FaithThis Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondents’ bad faith pursuant to paragraph 4(b) of the Policy as set forth below.
First, based on the circumstances here, the Panel concludes that the Respondents registered and are using the Disputed Domain Names in bad faith in an attempt to attract Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainant’s SALOMON Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Names. The Respondents’ registration and use of the Disputed Domain Names indicate that such registration and use has been done for the specific purpose of trading on and targeting the name and reputation of the Complainant and its SALOMON Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”). The Respondents appeared to be passing off their websites at the Disputed Domain Names
Second, as of the writing of the Decision, when the Disputed Domain Names resolved to several inactive landing pages that stated that the landing pages were a “dangerous scam page” that contained “malicious software”, such use also demonstrated the Respondents’ bad faith. See Carvana, LLC v. Domain Privacy, Above.com Domain Privacy,WIPO Case No. D2021-0290 (using the disputed domain name to disseminate malware indicates bad faith per se).
Third, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
Finally, the Complainant has sold and marketed its products for almost 75 years, long before the Respondents’ registration of the Disputed Domain Names. It is therefore implausible that the Respondents were not aware of the SALOMON Mark when they registered the Disputed Domain Names. The use of the three Disputed Domain Names to resolve to websites that impersonated the Complainant’s official website is additional evidence that the Respondents were well aware of the Complainant and its SALOMON Mark when registering the Disputed Domain Names. Thus, the Panel finds that the Respondents had actual knowledge of the SALOMON Mark and targeted the Complainant when they registered the Disputed Domain Names, demonstrating the Respondents’ bad faith.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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
Lynda M. Braun
Sole Panelist
Date: December 19, 2021
1 The registrant for the disputed domain names
2 As of the writing of this Decision, the Disputed Domain Names resolve to inactive landing pages for each Disputed Domain Name, stating, for example, “Dangerous Scam Page [...] can contain malicious software”, “Dangerous Phishing Page [...] can contain malicious software”, “This site can’t be reached”, and/or “This site cannot provide a secure connection”.
3 The same reasoning applies to the current use of the Disputed Domain Names to resolve to inactive landing pages that state that the websites cannot be found or that the landing pages contain malware.