Athletic Propulsion Labs LLC v. Klaudia Kastner / Andersson Olga / Client Care / Web Commerce Communications Limited
Claim Number: FA2203001986417
Complainant is Athletic Propulsion Labs LLC (“Complainant”), represented by Matthew D. Witsman of Foley & Lardner LLP, District of Columbia, USA. Respondent is Klaudia Kastner / Andersson Olga / Client Care / Web Commerce Communications Limited (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <apl-southafrica.com>, <aplshoesuk.com>, <aplnederland.com>, <aplnorge.com>, <apl-mexico.com>, <aplshoesfrance.com>, <apl-chile.com>, <aplsouthafrica.com>, <aplshoesusa.com>, <apl-australia.com>, <aplayakkabi.com>, and <aplsale.com>, registered with Gransy, s.r.o.; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; MAT BAO CORPORATION.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2022; the Forum received payment on March 1, 2022.
On March 2, 2022, Gransy, s.r.o.; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; MAT BAO CORPORATION confirmed by e-mail to the Forum that the <apl-southafrica.com>, <aplshoesuk.com>, <aplnederland.com>, <aplnorge.com>, <apl-mexico.com>, <aplshoesfrance.com>, <apl-chile.com>, <aplsouthafrica.com>, <aplshoesusa.com>, <apl-australia.com>, <aplayakkabi.com>, and <aplsale.com> domain names are registered with Gransy, s.r.o.; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; MAT BAO CORPORATION and that Respondent is the current registrant of the names. Gransy, s.r.o.; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; MAT BAO CORPORATION has verified that Respondent is bound by the Gransy, s.r.o.; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; MAT BAO CORPORATION 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 March 7, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2022 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@apl-southafrica.com, postmaster@aplshoesuk.com, postmaster@aplnederland.com, postmaster@aplnorge.com, postmaster@apl-mexico.com, postmaster@aplshoesfrance.com, postmaster@apl-chile.com, postmaster@aplsouthafrica.com, postmaster@aplshoesusa.com, postmaster@apl-australia.com, postmaster@aplayakkabi.com, postmaster@aplsale.com. Also on March 7, 2022, the 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 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity. 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.”
The domain names in the present dispute are similarly constructed as each domain name starts with Complainant’s trademark, has a geographical term following the trademark or the term “sale,” contains the word “shoes” or a transliteration of such word, may have a hyphen inserted in the domain name, and concludes with “.com.” Further, the domain names were each registered using a Kuala Lumpur address between October 5, 2021 and November 22, 2021 through the same domain name registrar. The domain names each address a website that copies of Complainant’s genuine website at <athleticpropulsionlabs.com>. Therefore, the at-issue domain names clearly appear to be related to, or controlled by, the same person, persons, or entity. Additionally, Complainant’s contention that the domain names’ registrants be treated as a single entity in the instant proceeding is unopposed. Based on the foregoing, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding. The registrants will collectively be referred to as Respondent.
A. Complainant
Complainant contends as follows:
Complainant is a globally recognized as a world leader in both men’s and women’s athletic footwear and apparel.
Complainant has rights in the APL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) as well as other registrations worldwide.
Respondent’s <apl-southafrica.com>, <aplshoesuk.com>, <aplnederland.com>, <aplnorge.com>, <apl-mexico.com>, <aplshoesfrance.com>, <apl-chile.com>, <aplsouthafrica.com>, <aplshoesusa.com>, <apl-australia.com>, <aplayakkabi.com>, and <aplsale.com> domain names are confusingly similar to Complainant’s APL mark. Respondent incorporates the mark in its entirety and adds the generic terms “shoes,” “ayyakabi,” (“shoes” in Turkish), or “sale” along with geographic descriptors, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <apl-southafrica.com>, <aplshoesuk.com>, <aplnederland.com>, <aplnorge.com>, <apl-mexico.com>, <aplshoesfrance.com>, <apl-chile.com>, <aplsouthafrica.com>, <aplshoesusa.com>, <apl-australia.com>, <aplayakkabi.com>, and <aplsale.com> domain names as Respondent is not commonly known by any at-issue domain names nor did Complainant authorize Respondent to use the APL mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to impersonate Complainant by resolving to webpages that make use of Complainant’s APL mark along with products and services associated with the mark and Complainant’s business.
Respondent registered and used the <apl-southafrica.com>, <aplshoesuk.com>, <aplnederland.com>, <aplnorge.com>, <apl-mexico.com>, <aplshoesfrance.com>, <apl-chile.com>, <aplsouthafrica.com>, <aplshoesusa.com>, <apl-australia.com>, <aplayakkabi.com>, and <aplsale.com> domain names in bad faith to impersonate and pass off as Complainant by resolving to webpages that make use of its APL mark and offer goods while failing to deliver ordered merchandise. Respondent had actual knowledge of Complainant’s rights in the APL mark due to the longstanding use and fame of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the APL trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the APL trademark.
The at-issue domain names address website (or websites) that mimic Complainant’s genuine website and that purports to offer goods that compete with Complainant’s goods. Respondent may take orders and payment for such goods, but fails to deliver.
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registrations for APL as well as its other national trademark registrations for APL worldwide are each sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s <apl-southafrica.com>, <aplshoesuk.com>, <aplnederland.com>, <aplnorge.com>, <apl-mexico.com>, <aplshoesfrance.com>, <apl-chile.com>, <aplsouthafrica.com>, <aplshoesusa.com>, <apl-australia.com>, <aplayakkabi.com>, and <aplsale.com> domain names each contain Complainant’s APL trademark followed by a geographic term and/or other generic term, and conclude with the top-level, “.com.” Some of the domain names additionally contain an irrelevant hyphen. The differences between any of Respondent’s domain names and Complainant’s trademark are insufficient to distinguish any such domain name from Complainant’s APL mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s at-issue domain names are each confusingly similar to Complainant’s APL mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)), see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain names does not identify any domain names’ registrant by a name that is suggestive of one of the at-issue domain names and the record before the Panel contains no evidence that tends to prove that any registrant is commonly known by one (or more) of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by <apl-southafrica.com>, <aplshoesuk.com>, <aplnederland.com>, <aplnorge.com>, <apl-mexico.com>, <aplshoesfrance.com>, <apl-chile.com>, <aplsouthafrica.com>, <aplshoesusa.com>, <apl-australia.com>, <aplayakkabi.com>, or <aplsale.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <apl-southafrica.com>, <aplshoesuk.com>, <aplnederland.com>, <aplnorge.com>, <apl-mexico.com>, <aplshoesfrance.com>, <apl-chile.com>, <aplsouthafrica.com>, <aplshoesusa.com>, <apl-australia.com>, <aplayakkabi.com>, and <aplsale.com> domain names address websites that mimic Complainant’s genuine website. Respondent thereby attempts to pass itself off as Complainant and offers products that compete with those offered by Complainant for sale. Respondent’s use of each at-issue domain names in this manner indicates that none of the domain names promotes a bona fide offering of goods or services nor legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing and absent any contrary evidence from Respondent or otherwise, Complainant satisfies its initial burden and conclusively shows Respondent’s lack of rights and legitimate interests in each at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent uses each at-issue domain name to address a website mimicking Complainant’s genuine website. The website offers goods that compete with Complainant, take orders and payments for such goods, but fails to deliver any merchandise to the putative purchaser. Such use of the confusingly similar at-issue domain names indicates Respondent’s bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). Indeed, Respondent’s criminal use of the domain name to defraud third parties likewise demonstrates Respondent’s bad faith regarding the domain names.
Moreover, Respondent had actual knowledge of Complainant’s rights in the APL mark when it registered <apl-southafrica.com>, <aplshoesuk.com>, <aplnederland.com>, <aplnorge.com>, <apl-mexico.com>, <aplshoesfrance.com>, <apl-chile.com>, <aplsouthafrica.com>, <aplshoesusa.com>, <apl-australia.com>, <aplayakkabi.com>, and <aplsale.com> as domain names. Respondent’s actual knowledge is evident given the notoriety of the APL trademark; given the fact that Respondent includes Complainant’s trademark in numerous domain names; and given that the domain names address a website offering goods in competition with Complainant. Respondent’s registration of the at-issue domain names with knowledge of Complainant’s trademark rights in APL shows Respondent’s bad faith registration and use of the at-issue domain names pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apl-southafrica.com>, <aplshoesuk.com>, <aplnederland.com>, <aplnorge.com>, <apl-mexico.com>, <aplshoesfrance.com>, <apl-chile.com>, <aplsouthafrica.com>, <aplshoesusa.com>, <apl-australia.com>, <aplayakkabi.com>, and <aplsale.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 5, 2022
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