The Complainant is Molicopi, S.L., Spain, represented by PADIMA TEAM SLP, Spain.
The Respondents are Michael MEIER, Germany; David KUNZE, Germany; Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Juliane Bumgarner, Germany; Client Care, Web Commerce Communications Limited, Malaysia; Domain Administrator, See PrivacyGuardian.org, United States / Sara Gaertner, Germany; Domain Administrator, See PrivacyGuardian.org, United States / Janina Dresner, Germany; Domain Administrator, See PrivacyGuardian.org, United States / Maximilian Oster, Germany.
2. The Domain Names and RegistrarsThe 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 November 5, 2021. On November 5, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On November 8, 2021, the Registrars transmitted by email to the Center its verification response 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 November 11, 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 the first amended Complaint on November 16, 2021. On November 16, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with additional disputed domain names. On November 16 and 17, 2021, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the additional disputed domain names which differed from the named Respondents and contact information in the Complaint. On November 24, 2021, the Complainant filed the second amended Complaint. On November 25, 2021, the Center issued a Notification of (Partial) Withdrawal regarding several domain names that the Complainant removed from the present dispute via the second amended Complaint.
The Center verified that the Complaint together with the amended Complaints 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 21, 2021.
The Center appointed Alistair Payne as the sole panelist in this matter on January 13, 2022. 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 based in Spain manufactures and sells leather goods and accessories in various countries, in particular through its main website at “www.pikolinos.com”. It owns a number of combined word and device marks that incorporate the PIKOLINOS mark including European Union Trade Mark (“EUTM”) No. 003813177, which was filed on July 9, 2004, and registered on August 27, 2010.
The disputed domain names were all registered during the period September 18, 2021 to October 27, 2021. Each of the disputed domain names resolves to a website that is presented as if it is the Complainant’s, featuring the Complainant’s trade mark that incorporates the PIKOLINOS word mark together with a pictorial device and the tag line “get comfy & smile”, and also reproducing some of the same images as are on the Complainant’s main website. The websites at the disputed domain names are all in similar format and use the same style.
5. Parties’ Contentions A. ComplainantThe Complainant requests that the proceedings for each of the disputed domain names be consolidated on the basis that they are all under common control. The Complainant notes in this regard that the disputed domain names are in a very similar format as each of them consists of the Complainant’s mark PIKOLINOS together with a country name abbreviation such as “uk”, “usa”, “au”, “india”, “magyarorszag”, “mexico”, “singapore”, or common words related to sale of the products sold by the Complainant such as “shoes”, “boots”, or “shoessale”. Further, says the Complainant, the content on the website to which each of the disputed domain names resolve is almost the same, and the structure and appearance of each website is near identical, with all of them using the Complainant’s images and combined word and logo mark without authorisation. The Complainant notes that all of them were registered within a relatively short time window, from September 18, 2021 to October 27, 2021. It also says that the addresses of the registrants of
The Complainant submits that it owns registered trade mark rights as set out above. It says that each of the disputed domain names contains its PIKOLINOS trade mark.
The Complainant submits that each Respondent has used its PIKOLINOS mark in a disputed domain name without its authorisation. It says that the fact that each disputed domain name contains the PIKOLINOS sign together with country name abbreviations such as “uk”, “usa”, “au”, “india”, “magyarorszag”, “mexico” or “singapore”, or common words for products sold by the Complainant such as “shoes”, “boots”, or “shoessale” shows that the aim of the Respondent in each case is to confuse Internet users searching for the Complainant’s products into thinking that they had arrived at the Complainant’s website and to create a false link between the Complainant’s PIKOLINOS mark and each of the disputed domain names. The Complainant is neither in possession of, nor aware of the existence of any evidence demonstrating that the Respondents might be commonly known by any of the disputed domain names. As a result says the Complainant, none of the Respondents has any rights or legitimate interests in the disputed domain names.
As far as bad faith is concerned, the Complainant says that the PIKOLINOS mark is a worldwide known trade mark and therefore the Respondents must have known that it would be registered as a trade mark in various jurisdictions worldwide. It submits that the Respondents knowingly registered each of the disputed domain names with the intention of trading off the goodwill and reputation attaching to the PIKOLINOS trade mark or to the Complainant.
It says that the disputed domain names are being used to resolve to commercial websites that reproduce the content of the Complainant’s official website and the PIKOLINOS mark. It notes that the websites at each of the disputed domain names feature the Complainant’s trade marks, logo, and images without any disclaimer informing about the lack of relationship with the Complainant. Therefore, says the Complainant, the Respondents’ aim is to capitalise on the reputation of the Complainant’s trade marks by diverting Internet users seeking the Complainant’s products to its websites for financial gain, by intentionally creating a likelihood of confusion with the Complainant’s registered trade marks as to the source, sponsorship, affiliation, or endorsement of its websites and/or the goods offered or promoted through said websites. This says the Respondents amount to registration and use of each of the disputed domain names in bad faith.
B. RespondentsThe Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. ConsolidationThe key considerations in determining whether cases should be consolidated where they involve multiple respondents are identified at section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), as being 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 is also noted as being a relevant consideration.
In this case, there are numerous similarities between the disputed domain names themselves and the websites to which they resolve. To begin with they are all in a very similar format as each of them consists of the Complainant’s mark PIKOLINOS together with terms such as “uk”, “usa”, “au”, “india”, “magyarorszag”, “mexico”, “singapore”, or terms related to sale of the products sold by the Complainant such as “shoes”, “boots”, or “shoessale”. In addition, the content on the website to which each of the disputed domain names resolve is almost the same, and the structure and appearance of each website is near identical. It is apparent that each of them uses the Complainant’s distinctive combined word and device mark, and certain of the images appear to have been reproduced from the Complainant’s main website, according to the Complainant without its authorisation. It is notable that the websites at each of the disputed domain names look alike in terms of format and style.
All of the disputed domain names were registered during the short period from September 18, 2021 to October 27, 2021. The Complainant has submitted that the addresses of the registrants of
Overall, there is a high level of similarity between the format of the disputed domain names, and also between the format and content of the websites to which they resolve. Coupled with the fact that certain of the German registrant addresses are obviously false and that it appears likely that the various registrant details provided for registration do not correspond to the actual underlying registrant of the disputed domain names, the Panel finds that it is most likely that they are under common control. None of the Respondents have challenged the Complainant’s request for consolidation, and it is clearly most procedurally efficient, and in all the circumstances, fair and equitable for the disputed domain names to be included together in this one case.
6.2. Substantive Issues A. Identical or Confusingly SimilarThe Complainant has demonstrated that it owns EUTM No. 003813177 being a combined word and device mark that incorporates the PIKOLINOS mark and which was filed on July 9, 2004, and registered on August 27, 2008. The clearly dominant element of this combined registered trade mark is PIKOLINOS.
Each of the disputed domain names wholly incorporates the Complainant’s PIKOLINOS mark and is therefore confusingly similar to it. The addition in each disputed domain name, as the case may be, of the terms “uk”, “usa”, “au”, “india”, “magyarorszag”, “mexico”, or “singapore”, or of the terms “shoes”, “boots”, or “shoessale”, does not prevent a finding of confusing similarity. Accordingly, the Panel finds that the Complaint succeeds under the first element of the Policy in relation to each of the disputed domain names.
B. Rights or Legitimate InterestsThe Complainant has submitted that each Respondent has used the Complainant’s PIKOLINOS mark in the corresponding disputed domain name without its authorisation. It has also submitted that the fact that each disputed domain name contains the PIKOLINOS sign together with terms such as “uk”, “usa”, “au”, “india”, “magyarorszag”, “mexico”, or “singapore” or terms for products sold by the Complainant such as “shoes”, “boots”, or “shoessale”, which shows that the aim of the Respondent in each case is to confuse Internet users searching for the Complainant’s products into thinking that they had arrived at the Complainant’s website and to create a false link between the Complainant’s PIKOLINOS mark and each of the disputed domain names. The Complainant has also contended that it is neither in possession of, nor aware of the existence of any evidence demonstrating that the Respondents might be commonly known by any of the disputed domain names.
The Panel finds that the Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the respective disputed domain names. As the Complainant’s prima facie case has not been rebutted by the Respondents, the Panel finds that the Complainant has successfully met its burden and that the Complaint succeeds under this element of the Policy.
C. Registered and Used in Bad FaithThe disputed domain names were all registered during the period September 18, 2021 to October 27, 2021, many years after the Complainant registered its combined word and logo PIKOLINOS mark in 2010. The PIKOLINOS mark is distinctive, and according to the Complainant, its products have been widely distributed in numerous countries for some time and the PIKOLINOS mark is likely to have developed a high degree of repute as a result. In these circumstances and also considering that the websites at each of the disputed domain names reproduces the Complainant’s registered combined word and logo mark, and appears to also copy certain of the images on the Complainant’s main website, it appears to the Panel that the Respondents (or the person or entity in common control of them) were well aware of the Complainant’s PIKOLINOS mark and business at the date of registration of each of the disputed domain names.
Under paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of a domain name in bad faith where a respondent has used the domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s trade marks as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
Each of the disputed domain names contains the PIKOLINOS mark and resolves to a website that promotes or sells the same or similar shoe or leather products to those available on the Complainant’s official website. When Internet users arrive at the website to which each disputed domain name resolves, they are confronted with what appears to be the Complainant’s distinctive word and logo mark including its tag line “get comfy & smile”. There is no disclaimer on the websites and certainly each of the websites looks like it is an official or officially endorsed site that sells the Complainant’s products. This is clearly intended to confuse or mislead Internet users into thinking that they are dealing with the Complainant or an endorsed supplier of the Complainant’s products when this is not the case and is for the commercial benefit of the Respondents or the person or entity behind them in terms of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the disputed domain names have been both registered and used in bad faith, and that the Complaint also succeeds under this element 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 following disputed domain names,
Alistair Payne
Sole Panelist
Date: January 26, 2022