ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION CRISPI Sport srl v. Melanie Feierabend, Domain Admin, Privacy Protect LLC PrivacyProtect org, Wolfgang Papst, Anna Faust, Sandra Kastner, Simone Durr, Vesna Tolictr Case No. D2024-2825 1. The Parties The Complainant is CRISPI Sport srl, Italy, represented by Dr. Modiano & Associati S.p.A., Italy. The Respondent is Melanie Feierabend, Germany, Domain Admin, Privacy Protect LLC PrivacyProtect org, United States of America, Wolfgang Papst, Germany, Anna Faust, Germany, Sandra Kastner, Germany, Simone Durr, Germany, and Vesna Tolictr, Germany. 2. The Domain Names and Registrars The disputed domain names , , , , , and are registered with Web Commerce Communications Limited dba WebNic.cc. The disputed domain names and are registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrars”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2024. On July 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 12 and 15, 2024, 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 Respondents (Privacy Protect LLC and Whoisprotection.cc) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 15, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, 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 domain names are under common control. The Complainant filed an amended Complaint on July 18, 2024.
page 2 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 July 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 12, 2024. The Center appointed Nayiri Boghossian as the sole panelist in this matter on August 14, 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 The Complainant is a manufacturer of footwear founded in 1975. The Complainant owns trademark registrations for CRISPI such as: - International trademark registration No. 537326, registered on June 8, 1989; and - Italian trademark registration No. 969977, registered on June 21, 2005. The Complainant owns domain names such as , , and . The disputed domain names , , , , , and were registered on January 30, 2024. They all resolved, at least at some point before the Complaint, to websites, which purported to sell the Complainant’s products at hugely discounted prices. The disputed domain names and were registered on January 25, 2024 and February 17, 2024 respectively and resolved, at least at some point before the Complaint, to websites, which purported to sell the Complainant’s products. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant’s trademark is well-known. The disputed domain names incorporate the Complainant’s trademark in its entirety combined with geographic identifiers or generic terms related to the Complainant’s business. These additions do not prevent a finding of confusing similarity as the Complainant’s trademark remains recognizable. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not authorized by the Complainant to use its trademark. It is difficult to infer a legitimate use of the disputed domain names as they contain the Complainant’s trademark in full. There is no evidence that the Respondent has trademarks or activities under the CRISPI trademark. The disputed domain names were registered a few decades after the registration of the Complainant’s trademark. On the websites, the copyright protected material of the Complainant was used as well as its trademark and logo.
page 3 There is no bona fide use of the disputed domain names. The Respondent is not known by the trademark CRISPI. The disputed domain names are or were all linked to websites, which purported to sell the Complainant’s goods. The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant’s trademark is well-known and has been registered for over forty years. The Complainant’s company information is available through its website. The disputed domain names were registered for commercial gain by creating confusion with the Complainant’s trademark and suggesting that the Complainant is the source of the websites. The disputed domain names resolve to websites which sell supposedly the Complainant’s products at discounted prices. The Respondent never received authorization to sell the Complainant’s products. The Respondent must have known of the Complainant’s trademark. There is no data available about the Respondent. The Respondent was clearly targeting the Complainant and its business. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the 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 the 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 six out of eight domain names were registered with the same registrar and on the same date, i.e. January 30, 2024; all of them have resolved to websites offering what seem to be the products of the Complainant and have very similar designs; and their layout is identical and they include photos of the Complainant’s products. The other two domain names, and , were registered on close dates, i.e. January 25, 2024 and February 17, 2024, and with the same registrar, and resolved to similar websites as the other six domain names. The names of all registrants seem to be German names with similar registrant email addresses, other than the unrevealed privacy details provided for and . 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 to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.
page 4 A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, country names, “store”, “mall”, and “shoes” in foreign languages, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. 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. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available 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 such as those enumerated in the Policy or otherwise. Furthermore, the composition of the disputed domain names, and the content of the website (prominently displaying the Complainant’s trademark and logo as well product pictures), falsely suggests sponsorship, affiliation, or endorsement by the Complainant. The Panel finds the second element of the Policy has been established. 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. In the present case, the Panel notes that the Respondent was aware of the Complainant’s products as, the disputed domain names reproduce the Complainant’s trademark in its entirety (in certain cases along terms
page 5 connected to the Complainant’s products), and also resolve to websites which offer products under the logo and the trademark of the Complainant. Paragraph 4(b) of the Policy 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 regards use, the Panel finds that the websites purporting to offer products under the logo and trademark of the Complainant amounts to an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark. This is clear evidence of bad faith, as set out in paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant has established the third element 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 the Complainant. /Nayiri Boghossian/ Nayiri Boghossian Sole Panelist Date: August 20, 2024
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