ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Crispi Sport S.r.l. v. Joseph Graham, Web Commerce Communications Limited, Friedmann Steffen, and Maurer Sabrina Case No. D2023-3806 1. The Parties The Complainant is Crispi Sport S.r.l., Italy, represented by Dr. Modiano & Associati S.p.A., Italy. The Respondent is Joseph Graham, United States of America, Web Commerce Communications Limited, Malaysia, Friedmann Steffen, Germany, and Maurer Sabrina, Germany. 2. The Domain Names and Registrars The disputed domain names , , , , , , , , , , , , , , , , , , , , , , and are registered with Alibaba.com Singapore E-Commerce Private Limited (the "First Registrar"). The disputed domain names () and () are registered with Gransy s.r.o d/b/a subreg.cz (the "Second Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2023. On September 12, 2023, the Center transmitted by email to the First Registrar and the Second Registrar a request for registrar verification in connection with the disputed domain names. On September 13, 14, and 19, 2023, the First Registrar and 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 (N/A, Not disclosed) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 20, 2023, with the registrant and contact information of nominally multiple underlying registrants revealed by the First Registrar and the Second Registrar, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all the disputed domain names are under common control. page 2 The Complainant filed a first amended Complaint on September 20, 2023, and a second amended Complaint on September 22, 2023. 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 Respondent of the Complaint, and the proceedings commenced on September 25, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 17, 2023. The Center appointed Mathias Lilleengen as the sole panelist in this matter on October 23, 2023. 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 Background Incorporated in 1975, the Complainant is a company in the field of footwear, particularly for trekking and mountain shoes. It has a turnover of about EUR 27 million (for the year 2021). CRISPI products are worn by outdoor enthusiasts in over 54 countries around the world including Europe, North America, Asia and Australia. The Complainant has rights in national and international registered trademarks for CRISPI, such as International trademark CRISPI No. 537326 registered on June 8, 1989.1 The Complainant also has registered domain names, such as , , and . The 21 disputed domain names were registered between December 4, 2022 and December 9, 2022. The remaining 4 disputed domain names were registered between February 22, 2023, and February 23, 2023. At the time of filing of the Complaint, tthe disputed domain names , , , and did not resolve to active webpages, and the remaining 21 disputed domain names resolved to very similar webpages purporting to sell the Complainant's products. 5. Parties' Contentions A. Complainant The Complainant argues that the disputed domain names are, if not registered by one and the same entity, at least linked and under common control. 23 out of 25 disputed domain names are registered with the same registrar (the First Registrar). The two last disputed domain names are registered with another registrar (the Second Registrar), probably because they are internationalized domain names ( and ) that are not offered by or not easy to be registered with the First Registrar. The two internationalized disputed domain names have the same IP addresses as some of the disputed domain names owned by the registrant Web Commerce Communications Limited. The disputed domain names are almost identical in their structure as they all contain in its entirety the CRISPI trademark, combined with geographic and/or a generic term related to the Complainant's business. Most of 1 The Panel notes that Annex 7 to the Complaint shows that the CRISPI trademarks are registered under the name of MARCOLIN ALESSANDRO, who appears to be the founder and owner of the Complainant ("www.crispi.it/en/the-story" and "www.crispi.it/en/about-crispi"). page 3 the disputed domain names resolve to websites presenting a number of the Complainant's copyrightprotected official product images and marketing materials and purporting to offer the CRISPI goods for sale. The content on the different webpages is basically the same but presented in different languages. All the disputed domain names have been registered within short periods of time. The 21 disputed domain names were registered between December 4, 2022, and December 9, 2022. The remaining four disputed domain names were registered between February 22, 2023, and March 22, 2023 (the Panel notes that these four disputed domain names were registered between February 22, 2023, and February 23, 2023). Although registered on different dates, these last four disputed domain names display identical and/or very similar images and contents (though in different languages). The registrants' names Maurer Sabrina and Friedmann Steffen appear to be German, and their locations appear to be in Germany, but nevertheless their email addresses follow the same structure, hosted by the same email provider, a Chinese company. The Complainant provides evidence of trademark registrations and argues that the disputed domain names incorporate the Complainant's trademarks with the addition of a geographic and/or a generic term relating to the Complainant's business. These additions in the disputed domain names are in the view of the Complainant not sufficient to prevent a finding of confusing similarity with the Complainant's trademark. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has not made any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The part of the disputed domain names that are being used, are not used in good faith as the online shops mimic the Complainant's official website and offer the Complainant's products without the Complainant's authorization. Furthermore, the composition of all the disputed domain names, wholly incorporating the Complainant's well-known trademark with one or two additional terms, carries a risk of implied affiliation. The Complainant argues that the disputed domain names were registered and are being used in bad faith. The CRISPI trademark is internationally renowned, and the Respondent must have had knowledge of the Complainant and its trademark when the Respondent registered the disputed domain names. The 21 disputed domain names have been used in bad faith to link to websites that purport to offer the CRISPIbranded goods for sale with copyright-protected official product images and marketing materials from the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites. As for the remaining four disputed domain names, they are passively held. This does not prevent a finding of bad faith under the doctrine of passive holding. Moreover, the Respondent has been hiding its contact details. The number of registrations containing the Complainant's trademark is an indication that the Respondent is targeting the Complainant and its business. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Procedural matters - Consolidation of Multiple Registrants Based on the available record, the Panel notes that: - Joseph Graham is listed as the registrant for the disputed domain names , , , , , , and ; - Maurer Sabrina is listed as the registrant of the disputed domain name ; page 4 - Friedmann Steffen is listed as the registrant of the disputed domain name ; and - Web Commerce Communications Limited is listed as the registrant of the remaining 16 disputed domain names. Based on the available record, the Panel further notes that: - the disputed domain name registered by Friedmann Steffen has the same IP address as the three disputed domain names registered by Web Commerce Communications Limited; - the disputed domain name registered by Maurer Sabrina has the same IP addresses as the three disputed domain names registered by Web Commerce Communications Limited; - the two disputed domain names registered by Joseph Graham has the same IP addresses as the one disputed domain name registered by Web Commerce Communications Limited. Further, Joseph Graham and Web Commerce Communications Limited have been consolidation in a previous UDRP case Hoboken Inversiones, S.L. v. Client Care, Web Commerce Communications Limited, and Joseph Graham, WIPO Case No. D2023-0286; - the content and layout of the websites at the 21 disputed domain names are very similar; - the composition of the disputed domain names shares the similarity as each disputed domain name incorporates the Complainant's trademark with a geographic and/or a descriptive term; - the 21 disputed domain names were registered in a short period of time, i.e., between December 4, 2022 and December 9, 2022 while the remaining four disputed domain names were also registered in a short period of time, i.e., between February 22, 2023, and February 23, 2023; - the 23 disputed domain names were registered with the First Registrar while the remaining two disputed domain names were registered with the second Registrar; - the email addresses of Joseph Graham, Friedmann Steffen, and Maurer Sabrina are all hosted by the email provider related to the Chinese companies. In sum, it is more likely than not that the disputed domain names are under common control. Importantly, the Respondent has been given the possibility to reply to the Complainant's contentions, including the consolidation request, but opted not to do so. Therefore, the Panel accepts the Complainant's request for consolidation of multiple registrants in this case, and concludes that consolidation is fair and equitable to all Parties and contributes to procedural efficiency. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 4.11.2. B. Identical or Confusingly Similar The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. See WIPO Overview 3.0, section 1.7. The Complainant has established that it has rights in the trademark CRISPI. Each disputed domain name incorporates the Complainant's trademark in its entirety, with the addition of a geographic and/or a descriptive term. These additions do not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. For the purpose of assessing under paragraph4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain ("gTLD") as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. page 5 Based on the available record, the Panel finds the disputed domain names are confusingly similar to the trademark in which the Complainant has rights, and therefore the first element of paragraph 4(a) the Policy has been established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names. There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. For the 21 disputed domain names, they have been used in purportedly offering for sale the Complainant's products, see section 6.D. below. The remaining four disputed domain names are passively held. Further, the composition of the disputed domain names carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. Such composition cannot constitute any fair use under the circumstances of this proceeding. Based on the available record, the Panel finds the second element of the Policy has been established. D. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The composition of the disputed domain names makes it probable that the Respondent was aware of the Complainant and its prior rights when the Respondent registered the disputed domain names. The Respondent has failed to provide any evidence of actual or contemplated good faith use of the disputed domain names. The use of the 21 disputed domain names for websites purportedly offering for sale the Complainant's products with copyright-protected official product images and marketing materials from the Complainant, is evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. The non-use of the remaining four disputed domain names does not prevent a finding of bad faith under the doctrine of passive holding and particular circumstances of this case. See WIPO Overview 3.0, section 3.3. For the reasons set out above, the Panel concludes that the disputed domain names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy. The third element of the Policy has been established. page 6 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the disputed domain names , , , , , , , (), , , , (), , , , , , , , , , , , , and transferred to the Complainant. /Mathias Lilleengen/ Mathias Lilleengen Sole Panelist Date: November 2, 2023
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