Red Wing Shoe Company, Inc. v. Kristin gruenewald / lisa propst / susanne vogler / anja muller / mike wurfel / sarah weisz / sarah schulze / torsten vogler / Eric Neudorf / Markus Kai
Claim Number: FA2103001938034
Complainant is Red Wing Shoe Company, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Kristin gruenewald / lisa propst / susanne vogler / anja muller / mike wurfel / sarah weisz / sarah schulze / torsten vogler / Eric Neudorf / Markus Kai (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <redwinguk.com>, <redwingnz.com>, <redwingfrance.com>, <botasredwings.top>, <redwingbootnz.com>, <stiefelredwing.com>, <redwingsbootnz.net>, <redwingspolska.com>, <redwingbootireland.com> and <redwingcanadasale.com>, all registered with Hosting Concepts B.V. d/b/a Registrar.eu; MAT BAO CORPORATION; NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2021; the Forum received payment on March 26, 2021.
On March 26, 2021; Mar 29, 2021; Mar 31, 2021, Hosting Concepts B.V. d/b/a Registrar.eu; MAT BAO CORPORATION; NameSilo, LLC confirmed by e-mail to the Forum that the <redwinguk.com>, <redwingbootireland.com>, <stiefelredwing.com>, <redwingsbootnz.net>, <redwingspolska.com>, <redwingfrance.com>, <botasredwings.top>, <redwingnz.com>, <redwingcanadasale.com> and <redwingbootnz.com> domain names are registered with Hosting Concepts B.V. d/b/a Registrar.eu; MAT BAO CORPORATION; NameSilo, LLC and that Respondent is the current registrant of the names. Hosting Concepts B.V. d/b/a Registrar.eu; MAT BAO CORPORATION; NameSilo, LLC has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu; MAT BAO CORPORATION; NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 1, 2021, the Forum served the Complaint and all Annexes, including a Vietnamese Written Notice of the Complaint, setting a deadline of April 21, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@redwinguk.com, postmaster@redwingbootireland.com, postmaster@stiefelredwing.com, postmaster@redwingsbootnz.net, postmaster@redwingspolska.com, postmaster@redwingfrance.com, postmaster@botasredwings.top, postmaster@redwingnz.com, postmaster@redwingcanadasale.com, postmaster@redwingbootnz.com. Also on April 1, 2021, the Vietnamese Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Language Of The Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Vietnamese. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:
(i) the disputed domain names contain English words and letters;
(ii) the content of several of the websites resolving from the domain names is displayed in English;
(iii) the websites that are expressed in other languages contain English copyright details;
(iv) these facts demonstrate Respondent’s proficiency in English; and
(v) Complainant is not conversant with Vietnamese.
Respondent does not contest any of these assertions. For that reason, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that requiring Complainant to translate the documents required to prosecute this proceeding in Vietnamese would put Complainant to a substantial financial burden and would unnecessarily delay this proceeding. Therefore, we further conclude that it would be in the interests of justice to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant alleges that the entities controlling the domain names at issue are the same person or entity, which is operating under several aliases. Complainant therefore requests that all ten domain name registrants be treated in this proceeding for all purposes as a single Respondent. In support of this request, Complainant asserts the following:
(a) all of the domain names except <redwingbootnz.net> and <botasredwings.top> share the same registrar (Mat Bao Corporation);
(b) those two domain names share the same website as the other domain names;
(c) there are only three domain names that do not refer to an identical website (<redwingnz.com>, <redwingbootnz.com> and <redwingcanadasale.com>);
(d) the website resolving from <redwingnz.com> is a different version of the fake website associated with the other domain names;
(e) the <redwingcanadasale.com> and <redwingbootnz.com> domain names relate to no website, despite which those domain names use the same name servers as the other domain names (F1G1NS1.DNSPOD.NET and F1G1NS2.DNSPOD.NET);
(f) the registrant details for the domain names share common characteristics, i.e.: the country code for Germany (DE) and two geographic areas (Rothenberg and Borgholzhausen); and
(g) these pertinent WHOIS information shows that Respondent has established a pattern of using fake addresses.
Because Respondent does not contest these assertions, and because it appears from the asserted facts that they cannot be explained by reference to mere coincidence, the Panel determines that the request must be granted. Accordingly, this Decision will refer to the collective of identified respondents throughout as a single Respondent.
A. Complainant
Complainant makes and sells work boots and related accessories worldwide.
Complainant holds a registration for the RED WING trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,244,602, registered July 5, 1983, and renewed most recently as of July 10, 2013.
Complainant also holds a registration for the RED WINGS trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,517,285, registered December 20, 1988, and renewed most recently as of November 10, 2018.
Respondent registered the domain names identified below on the dates indicated for each:
|
<redwingsbootnz.net> |
March 17, 2021 |
|
<redwingspolska.com> |
August 6, 2020 |
|
<stiefelredwing.com> |
August 2, 2020 |
|
<redwingfrance.com> |
August 2, 2020 |
|
<redwinguk.com> |
August 1, 2020 |
|
<redwingbootnz.com> |
August 1, 2020 |
|
<redwingbootireland.com> |
July 30, 2020 |
|
<redwingcanadasale.com> |
July 30, 2020 |
|
<redwingnz.com> |
June 23, 2020 |
|
<botasredwings.top> |
March 9, 2020 |
All of the domain names are confusingly similar to either or both of Complainant’s RED WING and RED WINGS trademarks.
Respondent has not been commonly known by any of the domain names.
Complainant has not licensed or otherwise authorized Respondent to use either its RED WING or its RED WINGS marks.
Respondent does not use any of the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent employs some of the domain names to profit by passing itself off as Complainant online in facilitation of purported sales of Complainant’s products without Complainant’s authorization or to sell counterfeits of Complainant’s products.
Others of the domain names are not actively used for any legitimate purpose.
Respondent lacks both rights to and legitimate interests in each of the domain names.
Respondent has engaged in a pattern of bad faith registration and use of the domain names by registering and deploying multiple domain names with similar structures and for similar purposes.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent registered the domain names while knowing of Complainant and its rights in RED WING and RED WINGS marks.
Respondent both registered and now uses each and all of the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to one or more trademarks in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the same domain name was registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the RED WING and RED WINGS trademarks sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of those marks with a national trademark authority, the USPTO. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Germany). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that all of Respondent’s <redwingcanadasale.com>, <redwinguk.com>, <redwingbootireland.com>, <stiefelredwing.com>, <redwingsbootnz.net>, <redwingspolska.com>, <redwingfrance.com>, <botasredwings.top>, <redwingnz.com> and <redwingbootnz.com> domain names are confusingly similar to one or the other of Complainant’s RED WING and RED WINGS marks. Each of the domain names incorporates one of the marks in its entirety, with only the deletion of the space between its terms and the addition of one or two generic terms relating to either the nature of or an aspect of Complainant’s business, plus a generic Top Level Domain (“gTLD”) (either “.com” or “.top” or “.net”).
As to Respondent’s deletion of the space between the terms of Complainant’s marks in forming the domain names, this is of no consequence to our analysis
because domain name syntax does not permit the use of blank spaces. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
[S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
With regard to Respondent’s inclusion of generic terms in the domain names, one such inclusion relates to Complainant’s marketing methods (“sale”) while others recite the word “boot or “boots” in several languages, each a direct reference to Complainant’s product line (two are in English (“boot”), another in German (“stiefel”), and yet another in Spanish (“botas”)). Where generic terms relate specifically to an aspect of a UDRP complainant’s business, they bolster a conclusion of confusing similarity as between the affected domain name and that complainant’s mark(s). See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
The remaining insertions of generic terms made by Respondent in creating the domain names refer to geographic locations (“nz” for New Zealand (occurring three times), “uk” for United Kingdom, “polska” for Poland, plus “canada,” “ireland” and “france”). It is well settled among UDRP panels that the inclusion of such geographic references in domain names that are built around the mark of another does not avoid a finding of confusing similarity. Most especially is this true where, as here, Complainant has a worldwide marketing profile. See, for example, Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding that the addition of the geographic term “Brasil” to the mark of a UDRP complainant in forming a domain name did not avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
Finally, under this head of the Policy, Respondent’s addition of various gTLD’s to Complainant’s marks in creating the domain names is irrelevant to our examination. See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the challenged domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the disputed domain names, and that Complainant has not licensed or otherwise authorized Respondent to use the RED WING and RED WINGS marks. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Eric Neudorf,” “Markus Kaiser,” “Kristen Gruenewald,” “Ilsa Propst,” “Susanne Vogler,” “Anja Muller,” “Mike Wurfel,” “Sarah Weisz,” “Sarah Schulze,” and “Torsten Vogler,” none of which resembles any of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses some of the domain names to profit by passing itself off as Complainant online to facilitate purported sales of Complainant’s products without Complainant’s authorization or to sell counterfeits of Complainant’s products, while others of the domain names are not actively used for any legitimate purpose. These employments are neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.
See, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum August 11, 2017):
Respondent has used the domain name to resolve to a website that … displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant …. [Therefore], the Panel finds that Respondent has no rights [to] or legitimate interests in the disputed domain name.
See also Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018):
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy ¶ 4(a)(ii).
That Respondent has registered and deployed ten (10) domain names, each of which is confusingly similar to one or both of Complainant’s RED WING and RED WINGS marks, demonstrates that Respondent has engaged in a pattern of bad faith registration and use of those domain names. This, is, without more, evidence that Respondent has registered and now uses all of the contested domain names in bad faith within the meaning of Policy ¶ 4(b)(ii). See, for example, United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018):
Complainant contends that Respondent is a serial cyber[-] squatter as evidenced by its registering four separate domain names all incorporating Complainant’s … mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
For Respondent to use several of the disputed domain names to profit by passing itself off as Complainant online in order to facilitate sales of counterfeit copies of Complainant’s products, as alleged in the Complaint, undeniably disrupts business, and therefore stands as proof of Respondent’s bad faith in registering and using those domain names. See, for example, Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1621199 (Forum July 10, 2015):
Use of a domain name to offer counterfeit goods does consist of bad faith [registration and use] under Policy ¶ 4(b)(iii).
The same behavior also illustrates an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain names. Under Policy ¶ 4(b)(iv), this too stands as proof of Respondent’s bad faith in registering and using those domain names. See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum October 23, 2008) (finding that a respondent’s attempt to gain commercially by deploying a domain name that was confusingly similar to the mark of a UDRP complainant in order to sell counterfeit products purporting to be those of that complainant demonstrated bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
Finally, under this head of the Policy, we take note of the fact that for Respondent to register and hold inactive for an extended period several domain names each of which is confusingly similar to one or both of Complainant’s RED WING and RED WINGS marks likewise exhibits Respondent’s bad faith in registering and using them, not least because such behavior prevents Complainant from reflecting its marks in corresponding domain names. See, for example, CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum February 14, 2018):
Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that all these domain names be TRANSFERRED forthwith from Respondent to Complainant: <redwingbootireland.com>, <redwingbootnz.com>, <redwingnz.com>, <redwingcanadasale.com>, <redwingspolska.com>, <redwingfrance.com>, <redwinguk.com>, <botasredwings.top>, <stiefelredwing.com> and <redwingsbootnz.net>.
Terry F. Peppard, Panelist
Dated: April 29, 2021
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