The Complainant is Axel Arigato AB, Sweden, represented by Otmore Limited, Malta.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia / Michael Needham, United States / Bernd Wulf, Germany / Sandra Schroder, Germany; Domain Administrator, See PrivacyGuardian.org, United States / Marcel Neudorf, Germany / Michelle Brandt, Germany; Domain Admin, Whoisprotection.cc, Malaysia / Kadeem Trujillo, Australia / Stefan Meister, Germany / Robert Jacobs, United States / David Mendoza, United States / Dollie Wilson, United States / Katharina Krueger, Germany / Ulrike Gloeckner, Germany; Client Care, Web Commerce Communications Limited, Malaysia.
2. The Domain Names and RegistrarsThe disputed domain names
The 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 December 2, 2021. On December 2, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On December 2, 3, and 6, 2021, the Registrars transmitted by email to the Center their verification responses 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 December 13, 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 December 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 February 9, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2022.
The Center appointed Steven A. Maier as the sole panelist in this matter on March 17, 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. Consolidation of ProceedingsThis administrative proceeding concerns a total of 101 disputed domain names, registered with four Registrars by at least 14 differently named underlying registrants. As contemplated by section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Complainant requests consolidation of the proceedings on the grounds that (i) the disputed domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In support of its request for consolidation, the Complainant provides evidence that 86 out of the 101 disputed domain names have resolved to websites which are similar to one another in appearance and which (as is discussed further below) appear to impersonate the Complainant’s own website. The Complainant contends that all of the disputed domain names follow a similar naming convention, combining the Complainant’s AXEL ARIGATO trademark with a geographical or other descriptive term. The Complainant also points to the fact that all of the disputed domain names were registered within a relatively short time period, i.e. between June 3, 2021 and November 6, 2021, many of them on the same dates, and that they have similar registration and technical details. Further, the Complainant submits that, based on the Registrar verification responses provided, all but four of the disputed domain names have the same contact telephone number.
Having reviewed the Complainant’s evidence, the Panel is satisfied that all of the 86 disputed domain names which have resolved to similar websites are likely to be under common control. The Panel is also satisfied that all of the remaining 15 disputed domain names have sufficient connection with those 86 disputed domain names, whether in terms of their disclosed registrant, naming convention, date of registration, choice of registrar or otherwise, to raise a prima facie case that those disputed domain names are under the same common control as the other 86 (although the Panel does not accept the Complainant’s evidence concerning telephone numbers, since the specific number which it cites appears to the Panel to be a formatting example provided by one of the Registrars).
In the light of the Panel’s findings above, and taking further into account the absence of any contradiction of the Complainant’s contentions by any of the Respondents, or any objection to the request for consolidation, the Panel finds (i) that the disputed domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. The Panel therefore directs that the proceedings be consolidated in respect of all of the disputed domain names.
5. Factual BackgroundThe Complainant is a company registered in Sweden. It is a supplier of lifestyle footwear including sneakers and has a significant online presence including a principal website at “www.axealarigato.com”.
The Complainant is the owner of numerous registrations in various territories of the trademark AXEL ARIGATO. Those registrations include, for example, European Union Trade Mark registration number 13051842 for the word mark AXEL ARIGATO, registered on November 11, 2014 for goods and services including shoes and footwear in International Class 18.
The disputed domain names were registered on dates between June 3, 2021 and November 6, 2021 inclusive.
The Complainant submits evidence that 86 of the disputed domain names have resolved to websites purporting to be those of the Complainant itself and that the remaining 15 disputed domain names have resolved to websites which generate security including “phishing” warnings, include pay-per-click (“PPC”) links, or resolve to no active website.
6. Parties’ Contentions A. ComplainantThe Complainant submits that all of the disputed domain names are confusingly similar to its AXEL ARIGATO trademarks. It contends that each of the disputed domain names incorporates that trademark in full, together with either a geographical or other descriptive term, including terms that relate to the sale of footwear.
The Complainant submits that none of the Respondents has any rights or legitimate interests in respect of any of the disputed domain names. It denies in particular that the Respondents are making any bona fide commercial use, or legitimate noncommercial or fair use, of any of the disputed domain names. The Complainant contends, instead, that the Respondents are using the disputed domain names for the purpose of websites which impersonate the Complainant’s own website for the purpose of misleading Internet users into making purchases of counterfeit products, or other websites with dishonest intent.
The Complainant contends that all of the disputed domain names were registered and have been used in bad faith. The Complainant submits screenshots of its own website at “www.axelarigato.com” and of the websites to which the overwhelming majority of the disputed domain names have resolved. The Complainant submits that the Respondents’ websites include the AXEL ARIGATO trademark, closely mimic the Complainant’s official website and seek to confuse Internet users into believing that they are dealing with the Complainant. The Complainant contends that the goods offered on the Respondents’ websites are counterfeit and/or competitive with the Complainant’s authorized products. The Complainant further submits that other of the Respondents’ websites are used dishonestly to obtain personal or financial information from visitors.
The Complainant requests the transfer of all of the disputed domain names.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
7. Discussion and FindingsIn order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have 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.
The Complainant has demonstrated that it has registered trademark rights in respect of the mark AXEL ARIGATO. All of the disputed domain names incorporate that trademark in full, together with various additional terms. In the view of the Panel, none of these additional terms prevents the Complainant’s trademark from being recognizable within the relevant disputed domain name and the Panel therefore finds that all of the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsIn the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondents have no rights or legitimate interests in respect of any of the disputed domain names. However, the Respondents have failed to file any Response in this proceeding and have not submitted any explanation for their registration and use of the disputed domain names, or evidence of rights or legitimate interests on their part in the disputed domain names, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel finds that 86 disputed domain names have been used in furtherance of a dishonest scheme to impersonate the Complainant and its business, which cannot give rise to rights or legitimate interests in respect of these disputed domain names. The remaining 15 disputed domain names have resolved to websites which generate security including “phishing” warnings, include PPC links, or resolve to no active website, which do not give rise to rights or legitimate interests in respect of these disputed domain names in the circumstances of this case. The Panel therefore finds that the Respondents have no rights or legitimate interests in respect of any of the disputed domain names.
C. Registered and Used in Bad FaithBased on the evidence submitted by the Complainant, which the Respondents have not disputed, there can be no serious doubt that the overwhelming majority of the disputed domain names have been used to resolve to websites which impersonate the Complainant’s own website and seek deliberately to mislead Internet users into believing they are dealing with the Complainant. The Panel finds that the websites make extensive use of the Complainant’s trademark and its own website images and falsely represent to visitors that they are operated by the Complainant.
With regard to the 15 disputed domain names that do not appear to have resolved to the websites described above, the Panel has already found that all of the disputed domain names in this administrative proceeding are under common control, and finds further that all incorporate the whole of the Complainant’s trademark in a manner that is inherently misleading. The Panel finds therefore that these additional disputed domain names, whether they have resolved to “phishing” or to PPC websites, or to no website at all, nevertheless form part of the Respondents’ dishonest scheme which targets the Complainant’s trademark.
The Panel finds in particular that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on their websites (paragraph 4(b)(iv) of the Policy).
The Panel finds therefore that all of 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 following disputed domain names be transferred to the Complainant:
The transfer of the disputed domain name
Steven A. Maier
Sole Panelist
Date: March 21, 2022