Wolverine World Wide, Inc. v. Ulrike Kuester / Wolfgang Dresner / Antje Holtzmann / Mike Koch / Stephan Eisenberg / Andreas Bauer / Steffen Friedmann / Sandra Reiniger / Della McCarthy / Jan Berg / Tom Neumann / Maik Weber
Claim Number: FA2104001942062
Complainant is Wolverine World Wide, Inc. (“Complainant”), represented by Malaina J Weldy of Warner Norcross + Judd LLP, Michigan, USA. Respondents are Ulrike Kuester / Wolfgang Dresner / Antje Holtzmann / Mike Koch / Stephan Eisenberg / Andreas Bauer / Steffen Friedmann / Sandra Reiniger / Della McCarthy / Jan Berg / Tom Neumann / Maik Weber (“Respondents”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kedsaustralia.com>, <kedsjapanese.com>, <kedsdolcevitahu.com>, <kedscanada.com>, <dolcevitakedsie.com>, <dolcevitakedssk.com>, <kedsdolcevitaturkey.com>, <merrellnz.com>, <merrellouletindia.com>, <merrelltr.com>, <boutiquemerrellcanada.com>, <sauconysweden.com>, and <sauconyinferno.com> (the “disputed domain names”), registered with MAT BAO CORPORATION (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 19, 2021; the Forum received payment on April 19, 2021.
On April 23, 2021, the Registrar confirmed by e-mail to the Forum that the <kedsaustralia.com>, <kedsjapanese.com>, <kedsdolcevitahu.com>, <kedscanada.com>, <dolcevitakedsie.com>, <dolcevitakedssk.com>, <kedsdolcevitaturkey.com>, <merrellnz.com>, <merrellouletindia.com>, <merrelltr.com>, <boutiquemerrellcanada.com>, <sauconysweden.com>, and <sauconyinferno.com> disputed domain names are registered with MAT BAO CORPORATION and that Respondent is the current registrant of the disputed domain names. The Registrar has verified that Respondent is bound by the 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 April 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 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@kedsaustralia.com, postmaster@kedsjapanese.com, postmaster@kedsdolcevitahu.com, postmaster@kedscanada.com, postmaster@dolcevitakedsie.com, postmaster@dolcevitakedssk.com, postmaster@kedsdolcevitaturkey.com, postmaster@merrellnz.com, postmaster@merrellouletindia.com, postmaster@merrelltr.com, postmaster@boutiquemerrellcanada.com, postmaster@sauconysweden.com, postmaster@sauconyinferno.com. Also on April 29, 2021, 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 May 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the persons and/or entities which control the disputed domain names at issue are effectively controlled by the same persons and/or entities, which are operating as Respondents under several aliases. 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 Panel concludes that the disputed domain names are all controlled or owned by the same persons or entities for the reasons set forth below: the disputed domain names are registered with the same Registrar; 12 of the 13 disputed domain names have the same IP address; 12 of the 13 disputed domain names have German mailing addresses; those disputed domain names with resolving websites have the same contact email information; all disputed domain names were registered between June 27, 2021 and August 14, 2021; and all disputed domain names consist of a similar naming convention that simply add geographic and/or generic terms to Complainant’s KEDS, MERRELL, and SAUCONY trademarks.
Therefore, the Panel finds that the Respondents are controlled by the same persons or entities and thus, are proper parties in this proceeding.
A. Complainant
Complainant is a seller of footwear and accessories under the KEDS, MERRELL, and SAUCONY brands. Complainant contends that it has rights in the KEDS, MERRELL, and SAUCONY trademarks based on registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 114,848, registered Jan. 2, 1917; Reg. No. 1,337,440, registered May 21, 1985; and Reg. No. 1,356,744, registered Aug. 27, 1985, respectively) (hereinafter collectively referred to as “the KEDS, MERRELL, and SAUCONY Marks” or “Complainant’s Marks”).
Complainant also contends that the disputed domain names are confusingly similar to the KEDS, MERRELL, and SAUCONY Marks, that the Respondents do not have rights or legitimate interests in the disputed domain names, and that the Respondents registered and are using the disputed domain names in bad faith.
B. Respondents
Respondents failed to submit a Response in this proceeding.
The Panel finds that Complainant holds enforceable trademark rights in the KEDS, MERRELL and SAUCONY Marks, that the disputed domain names are confusingly similar to Complainant’s Marks, that Respondents lack rights or legitimate interests in the disputed domain names, and that Respondents registered and are using the disputed domain names 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 the disputed domain names should be cancelled or transferred:
(1) the disputed domain names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(3) the disputed domain names were registered and are being used in bad faith.
In view of Respondents’ 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 section 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 Panel finds that Complainant has rights in the KEDS, MERRELL, and SAUCONY Marks based on registration of those marks with the USPTO under Policy ¶ 4(a)(i) (e.g., Reg. No. 114,848, registered Jan. 2, 1917; Reg. No. 1,337,440, registered May 21, 1985; and Reg. No. 1,356,744, registered Aug. 27, 1985). Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”)
The Panel also finds that the disputed domain names are confusingly similar to Complainant’s Marks because they use the Complainant’s KEDS, MERRELL, and SAUCONY Marks, add a generic or geographic term or abbreviation, and then add the generic Top-Level Domain (“gTLD”) “.com”. The addition of a generic or geographic term or abbreviation and a gTLD does not prevent confusing similarity between a disputed domain name and a trademark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (the addition of a generic term and a 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.”). Thus, the Panel finds that the disputed domain names are identical and/or confusingly similar to the Complainant’s Marks under Policy¶ 4(a)(i
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondents have no rights or legitimate interests in the disputed domain names. Under the Policy, Complainant is required to make out a prima facie case that Respondents lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondents carry the burden of demonstrating rights or legitimate interests in the disputed domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”). In this case, Respondents did not carry their burden to come forward with evidence of their rights or legitimate interests in the disputed domain names as they did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondents would have been hard-pressed to furnish availing arguments had they chosen to respond:
Specifically, Respondents are not commonly known by the disputed domain names, Complainant has not authorized, licensed, or otherwise permitted Respondents to use the KEDS, MERRELL, and SAUCONY Marks, and Respondents have no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because the disputed domain names either resolve to websites that are passively held, or resolve to websites that attempt to pass off as Complainant’s, and display goods competing with Complainant’s business.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondents’ bad faith registration and use pursuant to paragraph 4(b) of the Policy as described below.
The Panel finds that some of the Respondents use the disputed domain names to resolve to websites that compete with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website demonstrates bad faith per Policy ¶¶ 4(b)(iii) and (iv) and disrupts Complainant’s business. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)).
The Panel finds that the goods displayed on some of the resolving websites are made to look as though they are Complainant’s branded goods. In using the disputed domain names, Respondents attempt to confuse users into believing that such Respondents are Complainant or are otherwise affiliated or associated with Complainant. Respondents also attempt to portray themselves as Complainant’s subsidiaries, affiliates or authorized distributors—when they are not—through the use of the geographic terms “Australia,” “Canada,” “Japanese,” “India,” “Turkey,” and “Sweden” along with the geographic abbreviations “hu,” “ie,” “sk,” “nz” and “tr.” Such conduct is emblematic of bad faith.
Moreover, the Panel finds that Respondents have failed to make an active use of the websites to which some of the disputed domain names resolve, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website had no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)).
Finally, the use of disputed domain names to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006). Therefore, the Panel concludes that Respondents registered and are using the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kedsaustralia.com>, <kedsjapanese.com>, <kedsdolcevitahu.com>, <kedscanada.com>, <dolcevitakedsie.com>, <dolcevitakedssk.com>, <kedsdolcevitaturkey.com>, <merrellnz.com>, <merrellouletindia.com>, <merrelltr.com>, <boutiquemerrellcanada.com>, <sauconysweden.com>, and <sauconyinferno.com> disputed domain names be TRANSFERRED from Respondents to Complainant.
Lynda M. Braun, Panelist
Dated: June 7, 2021
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