ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION On Clouds GmbH v. Julia Bohm; Client Care, Web Commerce Communications Limited; and Felix Dresn Case No. D2024-1538 1. The Parties Complainant is On Clouds GmbH, Switzerland, represented by SILKA AB, Sweden. Respondents are Julia Bohm, Germany; Client Care, Web Commerce Communications Limited, Malaysia; and Felix Dresn, France. 2. The Domain Names and Registrars The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). The disputed domain name is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”). The disputed domain name is registered with 1API GmbH (the “Registrar”).
page 2 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2024. On April 11, 2024, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 12 and 15, 2024, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, respectively, which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on April 16, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting Complainant to either file separate complaints 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 domain names are under common control. Complainant filed an amendment to the Complaint on April 22, 2024. The Center verified that the Complaint together with the amendment to the 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 Respondents of the Complaint, and the proceedings commenced on April 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2024. No Respondent submitted a response. Accordingly, the Center notified the Respondent’s default on May 16, 2024. The Center appointed Scott R. Austin as the sole panelist in this matter on May 24, 2024. 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 Without contest by Respondents, Complainant asserts in its Complaint, as amended, and in its attached annexes, that there is sufficient evidence to support that: Founded in 2010, Complainant On Clouds GmbH is the trademark-holding subsidiary of corporate parent On Holding AG, which along with associated subsidiaries (collectively, “Complainant”) operates as a provider of sports apparel and shoes under trademarks incorporating the term “on”, including ON, ON CLOUD, ON CLOUD SHOES, ON SHOES and ON RUNNING as well as a design mark comprised of the stylized equivalent of the letters “ON” viewed vertically and “QC” viewed horizontally (collectively, the “ON Marks”). Headquartered in Switzerland with offices in North America, South America, Asia and Oceania, Complainant’s sports apparel products are sold online and through more than 6,000 retailers in over 50 countries around the world. Complainant also shows it has developed a substantial social media presence, with evidence of 1.6 million followers on Instagram (“https://www.instagram.com/on/”), more than 740 thousand followers on Facebook (“https://www.facebook.com/on”), and over 90 thousand followers on X (https://twitter.com/on_running). Complainant owns numerous registrations protecting the ON Marks in Switzerland and around the world, including:
page 3 Switzerland Registration No. 599,567, ON, registered on April 21, 2010, for goods in International Classes 25 and 28; International Registration No. 1050016, ON, registered on April 21, 2010, for goods and services in International Classes 25 and 28, designating several jurisdictions; International Registration No. 1185372, ON RUNNING, registered on October 25, 2013, for goods and services in International Classes 25 and 28, designating several jurisdictions; and International Registration No. 1640069, ON CLOUD, registered on November 17, 2021, for goods in International Class 25, designating several jurisdictions. Complainant is also the registrant of numerous domain names consisting of or including the ON Marks. Complainant’s official domain name is used to access its primary website at “www.on.com”, (the “Official ON Mark Website”) from which it advertises and sells its products to Internet users. Complainant also provides tailored jurisdiction specific websites accessed through the addition of geographic specific subdomains (e.g., “https://www.on.com/en-ch/ for Switzerland”, “https://www.on.com/de-de/ for Germany”, “https://www.on.com/pt-br/ for Brazil”, and “https://www.on.com/ja-jp/ for Japan”). Complainant also holds and uses other domain names which incorporate the ON Marks (e.g., and ). Complainant’s evidence submitted shows that all but two of the 44 disputed domain names were registered by Respondents with the same registrar, on registration dates ranging from December 2021 through October 2023, but many registered on the same day or within a short period of time of each other, and share numerous common characteristics and technical features. The two disputed domain names which are registered with other registrars, and were registered within days of one or more of the other disputed domain names. All are configured to incorporate one of Complainant’s ON Marks in its entirety combined with geographical and/or other descriptive terms (a number of which recur across multiple disputed domain names – e.g., the term ‘factoryoutlet’ appears in five and ‘shoes’ in 11 of the disputed domain names. Complainant’s annexes also show that as of the access dates referenced in the annexes, at least 43 of the 44 disputed domain names have been used to resolve or redirect to similarly structured “copycat” websites to impersonate Complainant by prominently featuring one or more of Complainant’s ON Marks and its official logo in conjunction with other visual indicia representative of Complainant and its business (e.g., images of Complainant’s goods) with no disclaimer, and purport to sell Complainant’s goods at discounted prices, but likely substituted by Respondent’s counterfeit goods. The single remaining disputed domain name, registered on the same IP server and same date as the disputed domain name , is inactive. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Complainant holds numerous trademark registrations for the ON Marks across many jurisdictions around the world. Complainant shows in its annexes that it owns registered trademark rights, including those set out in Section 4 above. Complainant further relies on the goodwill and recognition that has been attained under the ON Marks, which has become a well-known distinctive identifier for its products and services. Complainant shows that its ON Marks are well - recognized by the public around the world. Complainant asserts that the disputed domain names are confusingly similar to the ON Marks because each of the disputed domain names clearly encompass one of Complainant’s ON Marks in full, only followed or preceded by various descriptive or geographic terms, none of which additions are sufficient to prevent a finding of confusing similarity.
page 4 Complainant submits that there are no rights or legitimate interests held by Respondent in respect of the disputed domain names. Respondent is not commonly known by any of the disputed domain names, nor does Respondent have any authorization or license from Complainant to use the ON Mark or to register any of the disputed domain names. Complainant contends that the fact that each disputed domain name contains the ON Mark together with a geographic or footwear industry term such as “shoe” shows that the aim of Respondent in each case is to confuse Internet users searching for Complainant’s products or services into thinking that they had arrived at Complainant’s website and to create a false link between Complainant’s ON Marks and each of the disputed domain names. Respondent is not making a legitimate noncommercial or fair use of any of the disputed domain names. Rather Respondent is using 43 of the 44 disputed domain names to create a false association with Complainant’s brand to redirect consumers to copycat websites selling products under Complainant’s name. Such use does not amount to a bona fide offering of goods and services and can never confer rights or legitimate interests on a respondent, nor can such unauthorized impersonation to sell goods constitute a legitimate noncommercial or fair use of any of the disputed domain names. None of these resolving sites contain disclaimers accounting for their connection (or lack thereof) to Complainant. The remaining disputed domain name has not been actively used by Respondent. Respondent’s non-use of the remaining passively held disputed domain name does not confer it with a legitimate interest nor would use of a domain to further an illegitimate purpose. Complainant contends that the disputed domain names were registered and are being used in bad faith. First, Complainant asserts that the ON Marks are recognized worldwide and therefore Respondent must have been aware that it would be registered as a trademark in various jurisdictions worldwide. Complainant’s earliest ON Mark registration also predates the registration of all of the disputed domain names by approximately 11 years. Complainant submits, therefore, that Respondent knowingly registered each of the disputed domain names in bad faith with the intention of targeting Complainant’s ON Marks to trade off the goodwill and reputation attaching to Complainant’s ON Marks. Complainant contends that Respondent’s use of the disputed domain names is to capitalize on the reputation of Complainant’s trademark by diverting Internet users seeking Complainant’s services to its websites for financial gain, by intentionally creating a likelihood of confusion with Complainant’s registered trademarks as to the source, sponsorship, affiliation, or endorsement of its websites and/or the goods and services offered or promoted through the websites. Complainant contends, therefore, that Respondent’s conduct amounts to registration and use of each of the disputed domain names in bad faith. Complainant requests that the proceedings for each of the disputed domain names be consolidated on the basis that they are all under common control based on factors relied upon by prior UDRP panels in ruling upon such requests. Complainant’s support for these factors is provided in substantial and detailed evidence submitted in the amendment to its Complaint which is considered by the Panel in Section 6.1 below. Accordingly, Complainant requests transfer of all 44 of the disputed domain names. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Issue Consolidation: Multiple Respondents The Complaint and its amendment was filed in relation to nominally different disputed domain name registrants. Complainant alleges that the disputed domain name registrants are the same entity or mere
page 5 alter egos of each other, or under common control. Complainant requests the consolidation of Respondents pursuant to paragraph 10(e) of the Rules. Respondents did not comment on Complainant’s request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing Complainant’s request, the Panel will consider whether (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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes that given the evidence noted in Section 4 above showing the similarities in registrars, registration dates, disputed domain name configuration, resolution to similarly structured copycat websites purportedly selling Complainant’s goods or counterfeits in all but one of the 44 disputed domain names, and lone exception being inactive, these factors support a finding of common control under section 4.11.2 of the WIPO Overview 3.0 and UDRP decisions collected under it. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides it is appropriate to consolidate in a single proceeding the disputes regarding the nominally different disputed domain name registrants (referred to collectively below as “Respondent”). 6.2 Substantive Issues Paragraph 15(a) of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. The onus is on Complainant to make out its case and it is apparent from the terms of the Policy that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. WIPO Overview 3.0, section 4.2. Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of the probabilities that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has 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 Panel finds that Complainant has met its burden in all three elements of the Policy and will deal with each of these elements in more detail below.
page 6 A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant claims registered trademark rights in the ON Marks for its sports apparel and footwear products dating back to 2010. Sufficient evidence has been submitted in the form of electronic copies of valid and subsisting national and international trademark registration documents in the name of Complainant. Complainant has demonstrated, therefore, that it has rights in the ON Marks required under the Policy. See Horten v. Nikolaevich et al., WIPO Case No. D2016-0205; see also Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. Complainant’s extensive and detailed evidence submitted in the Complaint and its annexes relating to each disputed domain name shows that all of the 44 disputed domain names each clearly and prominently encompass one of Complainant’s ON Marks in full, combined with additional terms and Complainant contends therefore, that each of the disputed domain names is recognizable in and therefore confusingly similar to Complainant’s ON Marks. Prior UDRP panels have held that a domain name which wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other terms to such marks. WIPO Overview 3.0, section 1.8 (“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 also Meta Platforms, Inc. et al. v. Abuz Hamal et al., WIPO Case No. D2022-0212. Further, the addition of a generic Top-Level Domain (“gTLD”) “is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview 3.0, Section 1.11.1. Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in each of the disputed domain names. First, Complainant submits that it has not licensed, or otherwise authorized Respondent to use the ON Marks in any manner or to register any of the disputed domain names, nor has Complainant in any way or manner associated with or entered into any legal relationship with Respondent. There is no evidence of record that Respondent has registered as trademarks or used as unregistered marks the term “on” and Complainant states that to the best of its knowledge, Respondent has not registered any trademarks for ON, or any of the ON Marks, nor has Complainant found any evidence to suggest Respondent holds unregistered rights in such term. Complainant also contends and provides persuasive registration data evidence in the annexes to its Complaint that Respondent is not commonly known by any of the disputed domain names. Complainant has also asserted that it is neither in possession of, nor aware of the existence of any evidence demonstrating that Respondent might be commonly known by any of the disputed domain names.
page 7 Complainant next contends that Respondent lacks rights or legitimate interests in the respective disputed domain name because each disputed domain name is actively used to divert Complainant’s potential customers to Respondent’s website for its commercial gain. The Panel notes that websites at the disputed domain names offer for sale Complainant’s ON branded products at discounted prices. Under these circumstances, it is clear Respondent is attempting to impersonate and pass itself off as Complainant and possibly even reasonable to infer that the products offered are counterfeits of Complainant’s products given the drastically discounted prices shown on screen shots of Respondent’s copycat websites. Prior UDRP panels have consistently held that such use of a domain name for such illegitimate purposes to divert consumers to a commercial webpage for the sale of counterfeit goods or impersonation/passing off can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13; see also AB Electrolux v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2022-0241. After reviewing the 43 copycat websites operating from the disputed domain names, there is clearly no legitimate noncommercial or fair use on the part of Respondent using its disputed domain names for such websites. See Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211. Complainant has presented a prima facie case showing that Respondent does not have rights or legitimate interests in the disputed domain names. The Panel notes that Respondent has not submitted a Response in this proceeding, much less provided the Panel with any evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude Respondent has rights or legitimate interests in the respective disputed domain names. As such, Respondent has failed to rebut Complainant’s prima facie case. The Panel finds, therefore, that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy. C. 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 Panel finds that upon review of the circumstances present here as supported by the evidence submitted by Complainant in the annexes to its Complaint, Respondent’s actions constitute bad faith registration and use of the disputed domain names. In the present case, the Panel notes first that because Respondent has created a series of disputed domain names that are each confusingly similar to Complainant’s ON Marks, it is implausible to believe that Respondent was not aware of Complainant’s widely recognized ON Marks when it registered such confusingly similar disputed domain names. This likelihood of awareness is especially true where Complainant’s earliest ON Mark registration predates the registration of all of the disputed domain names by over 11 years. See e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. Complainant’s ON Marks are also registered all over the world. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith registration and use. See, WIPO Overview 3.0, section 3.1.4.
page 8 Based on the foregoing, the Panel finds it most likely that Respondent knew of and targeted Complainant and the ON Marks, noting inter alia its choice to encompass Complainant’s well-known ON Marks, with various trailing terms appended to the ON Marks in each of the disputed domain names. In these circumstances, registration of 44 disputed domain names incorporating Complainant’s internationally well-known ON Marks points to registration in bad faith. See On AG and On Clouds GmbH v. Kasper Skovse et al., WIPO Case No. D2023-3558; see also Facebook, Inc. v. Ricky Bhatia, WIPO Case No. D2017-2542. Bad faith use is also clear from Respondent’s conduct as discussed in section 6.B. Complainant has shown that 43 of the 44 disputed domain names operated by Respondent resolved at least at some point, to active copycat sites which reproduce Complainant’s registered ON Marks for Respondent to pass itself off as Complainant to purportedly engage in the sale of Complainant’s apparel and footwear products and claim Complainant’s content as Respondent’s, even to the extent of reconfiguring the web page copyright and developer footers to respectively, ‘Copyright © [year] [corresponding disputed domain name string] Powered by [corresponding domain name]’. The Panel finds, therefore, that Respondent has used its disputed domain names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s ON Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website which constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.1.4. See also On AG, On Clouds GmbH v. Domain Admin et al., WIPO Case No. D2021-2861. Panels have also held that the use of a domain name for the illegal activity claimed here, impersonation/passing off, or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4; see also On AG, On Clouds GmbH v. Domain Admin et al., supra. Moreover, the Panel notes that Respondent has registered 44 disputed domain names, all wholly incorporating Complainant’s well-known ON Marks. Respondent has provided no explanation of why it registered the disputed domain names, and particularly no explanation why 44 registrations were necessary or appropriate. Registration of 44 domain names which are confusingly similar to Complainant’s ON Marks is sufficient for the Panel also to find that Respondent is engaging in a pattern of abusive conduct within the meaning of paragraph 4(b)(ii) of the Policy. See WIPO Overview 3.0, section 3.1.2; see also Domain Manager (Klarna Bank AB) v. Host Master (1337 Services LLC), CAC-UDRP-105266 (2023). Paragraph 4(b) of the Policy also sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. As for the single disputed domain name that was inactive and not used to resolve to a copycat website, Panels have found that the non-use of a domain name (including a blank or “this page isn’t working at the moment” page as shown in Complainant’s annex evidence) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that the Panel has considered here as have prior UDRP panels, in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the Complainant’s mark, (ii) the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) Respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of Complainant’s trademark, and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the inactive disputed domain name does not prevent a finding of bad faith under the Policy. See On AG and On Clouds GmbH v. Domain Administrator, See PrivacyGuardian.org et al., WIPO Case No. D2021-4340.
page 9 Accordingly, considering all of the foregoing circumstances, the Panel finds that all 44 of the disputed domain names have been both registered and used in bad faith, and that Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision For 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 , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and , be transferred to Complainant. /Scott R. Austin/ Scott R. Austin Sole Panelist Date: June 30, 2024
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