Wolverine World Wide, Inc. v. Super Super Privacy Service LTD c/o Dynadot / Gail Budd / Baumgartner Thomas / Peter Bradley / Meister Alexander / Hopper Chad / Maria Ebersbacher / Jennifer Vogt / Johanna Koehler / Claudia Schmitt / Michelle Faerber / Dennis Friedmann / Dennis Brandt / Birgit Lemann / Peter Bradley / Thorsten Baier / dalanjiao ga / Clements Samuel / John Collins / Ricky Pendleton
Claim Number: FA2104001942949
Complainant is Wolverine World Wide, Inc. (“Complainant”), represented by Malaina J Weldy of Warner Norcross + Judd LLP, Michigan, USA. Respondent is Super Privacy Service LTD c/o Dynadot / Gail Budd / Baumgartner Thomas / Peter Bradley / Meister Alexander / Hopper Chad / Maria Ebersbacher / Jennifer Vogt / Johanna Koehler / Claudia Schmitt / Michelle Faerber / Dennis Friedmann / Dennis Brandt / Birgit Lemann / Peter Bradley / Thorsten Baier / dalanjiao ga / Clements Samuel / John Collins / Ricky Pendleton (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <merrellnorge.com>, <merrelltilbud.com>, <merrellfinland.com>, <merrellslovensko.com>, <merrellsuomi.com>, <merrellturkey.com>, <merrellindirim.com>, <merrelloutletcanada.com>, <merrellskorsverige.com>, <sapatilhasmerrellsaldos.com>, <merrellwebshop.com>, <merrellclearancecanada.com>, <merrellshoessouthafrica.com>, <sauconyaanbieding.com>, <sauconyjazzshoes.com>, <sauconysalg.com>, <saucony-us.com>, <sauconyit.com>, <sauconyhungary.com>, and <sauconyportugal.com>, registered with NameSilo, LLC and 1API GmbH.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 26, 2021; the Forum received payment on April 26, 2021.
On April 27, 2021; April 28, 2021, NameSilo, LLC; 1API GmbH confirmed by e-mail to the Forum that the <merrellnorge.com>, <merrelltilbud.com>, <merrellfinland.com>, <merrellslovensko.com>, <merrellsuomi.com>, <merrellturkey.com>, <merrellindirim.com>, <merrelloutletcanada.com>, <merrellskorsverige.com>, <sapatilhasmerrellsaldos.com>, <merrellwebshop.com>, <merrellclearancecanada.com>, <merrellshoessouthafrica.com>, <sauconyaanbieding.com>, <sauconyjazzshoes.com>, <sauconysalg.com>, <saucony-us.com>, <sauconyit.com>, <sauconyhungary.com>, and <sauconyportugal.com> domain names are registered with NameSilo, LLC; 1API GmbH and that Respondent is the current registrant of the names. NameSilo, LLC; 1API GmbH has verified that Respondent is bound by the NameSilo, LLC; 1API GmbH 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 May 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@merrellnorge.com, postmaster@merrelltilbud.com, postmaster@merrellfinland.com, postmaster@merrellslovensko.com, postmaster@merrellsuomi.com, postmaster@merrellturkey.com, postmaster@merrellindirim.com, postmaster@merrelloutletcanada.com, postmaster@merrellskorsverige.com, postmaster@sapatilhasmerrellsaldos.com, postmaster@merrellwebshop.com, postmaster@merrellclearancecanada.com, postmaster@merrellshoessouthafrica.com, postmaster@sauconyaanbieding.com, postmaster@sauconyjazzshoes.com, postmaster@sauconysalg.com, postmaster@saucony-us.com, postmaster@sauconyit.com, postmaster@sauconyhungary.com, postmaster@sauconyportugal.com. Also on May 6, 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 June 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating 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.”
Complainant contends in detail in its Complaint that the IP addresses of many of the domain names are the same, show similar locations based on those IP addresses, show similar email addresses for the contact, each of the domain names follow a similar naming structure, and each of the domain names have similar content and language on their resolving webpages.
Having considered all the circumstances, the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and the proceeding is therefore in order.
The proceeding may therefore go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant, Wolverine World Wide, Inc., and its subsidiaries are one of the world’s leading sellers of footwear sold under its MERRELL and SAUCONY marks, which have been in use since 1982 and 1898, respectively. Complainant registered its MERRELL and SAUCONY marks with the United States Patent and Trademark Office. See Compl. Ex. A. The disputed domain names, <merrellnorge.com>, <merrelltilbud.com>, <merrellfinland.com>, <merrellslovensko.com>, <merrellsuomi.com>, <merrellturkey.com>, <merrellindirim.com>, <merrelloutletcanada.com>, <merrellskorsverige.com>, <sapatilhasmerrellsaldos.com>, <merrellwebshop.com>, <merrellclearancecanada.com>, <merrellshoessouthafrica.com>, <sauconyaanbieding.com>, <sauconyjazzshoes.com>, <sauconysalg.com>, <saucony-us.com>, <sauconyit.com>, <sauconyhungary.com>, and <sauconyportugal.com> (“Disputed Domain Names”) are identical or confusingly similar because they wholly incorporate Complainant’s MERRELL or SAUCONY marks while adding generic and geographic terms and the “.com” generic top-level domain (“gTLD”) to form the domain names.
Respondent does not have any rights or legitimate interests in the Disputed Domain Names because Respondent is not commonly known by the Disputed Domain Names nor has Respondent received authorization from Complainant to use Complainant’s MERRELL and SAUCONY marks. Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods and services nor for a legitimate noncommercial or fair use because Respondent uses the Disputed Domain Names to sell goods in competition with Complainant.
Respondent registered and uses the Disputed Domain Names in bad faith because Respondent is passing off an affiliation with Complainant to sell products that compete with Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company which, with its subsidiaries, is one of the world’s leading sellers of footwear.
2. Complainant has established its trademark rights in the MERRELL and SAUCONY marks by virtue of registering the marks with the USPTO (e.g. Reg. No. 1,337,440 for MERRELL - registered on May 21, 1985 and Reg. No. 1,356,744 for SAUCONY – registered on Aug. 27, 1985).
3. Respondent registered each disputed domain name as follows: <sauconyhungary.com> was registered on May 6, 2019; <sauconysalg.com> was registered on May 7, 2019; <sauconyportugal.com> was registered on May 8, 2019; <sauconyjazzshoes.com> was registered on June 18, 2019; <merrellsuomi.com> was registered on July 19, 2019; <sauconyaanbieding.com> was registered on June 20, 2019; <merrelltilbud.com> was registered on July 20, 2019; <merrellturkey.com> was registered on July 23, 2019; <merrellnorge.com> was registered on July 24, 2019; <merrellslovensko.com> was registered on July 29, 2019; <merrellwebshop.com> was registered on August 18, 2019; <merrelloutletcanada.com> was registered on August 20, 2019; <merrellfinland.com> was registered on August 27, 2019; <merrellindirim.com> was registered on August 29, 2019; <sapatilhasmerrellsaldos.com> was registered on August 9, 2020; <merrellskorsverige.com> was registered on October 8, 2020; <merrellclearancecanada.com> was registered October 26, 2020; <saucony-us.com> was registered on January 19, 2021; <sauconyit.com> was registered on January 19, 2021; and <merrellshoessouthafrica.com> was registered on March 2, 2021.
4. Respondent uses the Disputed Domain Names to sell goods in competition with Complainant.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MERRELL and SAUCONY marks through its registration with the USPTO. Regsitration of a mark with the USPTO is sufficient to show that Complainant has rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence that it has registered its MERRELL and SAUCONY marks with the USPTO (e.g. Reg. No. 1,337,440 for MERRELL - registered on May 21, 1985 and Reg. No. 1,356,744 for SAUCONY – registered on Aug. 27, 1985). See Compl. Ex. A. Therefore, the Panel finds that Complainant has rights in its MERRELL and SAUCONY marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s MERRELL and SAUCONY marks. Complainant argues that the Disputed Doman Names are identical or confusingly similar because they wholly incorporate Complainant’s MERRELL or SAUCONY marks and add generic and geographic terms to the “.com” domain name. A domain name may be found to be cofusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), if it wholly incorporates the mark despite the addition of other words, including geographic terms, to the mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). The Disputed Domain Names include the geographic terms “norge”, “finland”, “slovensko”, “suomi”, “turkey”, “canada”, “sverige”, us”, “it”, “hungary”, “southafrica”, or “portugal”. The Disputed Domain Names also include the following generic terms: “salg”, “jazz”, “shoes”, “aanbieding”, “clearance”, “web”, “shop”, “saldos”, “sapatilhas”, “skor”, “outlet”, “indirim”, or “tilbud”. Therefore, the Panel finds that the Disputed Domain Names are identical or confusingly similar under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
(a) Respondent has chosen to take Complainant’s MERRELL and SAUCONY trademarks and to use them in its domain names, adding various generic and geographic terms which do not negate the confusing similarity between the domain names and the trademarks;
(b) Respondent registered each disputed domain name as follows: <sauconyhungary.com> was registered on May 6, 2019; <sauconysalg.com> was registered on May 7, 2019; <sauconyportugal.com> was registered on May 8, 2019; <sauconyjazzshoes.com> was registered on June 18, 2019; <merrellsuomi.com> was registered on July 19, 2019; <sauconyaanbieding.com> was registered on June 20, 2019; <merrelltilbud.com> was registered on July 20, 2019; <merrellturkey.com> was registered on July 23, 2019; <merrellnorge.com> was registered on July 24, 2019; <merrellslovensko.com> was registered on July 29, 2019; <merrellwebshop.com> was registered on August 18, 2019; <merrelloutletcanada.com> was registered on August 20, 2019; <merrellfinland.com> was registered on August 27, 2019; <merrellindirim.com> was registered on August 29, 2019; <sapatilhasmerrellsaldos.com> was registered on August 9, 2020; <merrellskorsverige.com> was registered on October 8, 2020; <merrellclearancecanada.com> was registered October 26, 2020; <saucony-us.com> was registered on January 19, 2021; <sauconyit.com> was registered on January 19, 2021; and <merrellshoessouthafrica.com> was registered on March 2, 202;
(c) Respondent uses the Disputed Domain Names to sell goods in competition with Complainant.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have any rights or legitimate interests in the Disputed Domain Names because Respondent is not commonly known by the Disputed Domain Names. Evidence of a respondent not being commonly known by a domain name, under Policy ¶ 4(c)(ii), may be found through identifying WHOIS information that is not relevant to the domain name and where a respondent did not obtain authorization by a complainant to use a complainant’s mark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). In the WHOIS information, each of the different names used for the registrant is not related to the domain name. See Compl. Ex. B. Complainant also submits that Respondent was not authorized to use any of Complainant’s marks. Therefore, the Panel finds that Respondent is not commonly known by the Disputed Domain Names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the Disputed Domain Names to sell goods in direct competition with Complainant. Use of a domain name to offer products or services in direct competition of a complainant is not a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Each of the websites associated with the Disputed Domain Names appears to offer footwear – the same products that Complainant offers. See Compl. Ex. C. Therefore, the Panel finds that Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the Disputed Domain Names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the Disputed Domain Names was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered or uses the Disputed Domain Names in bad faith because Respondent uses them to pass itself off as Complainant or a distributor of Complainant. Evidence of bad faith may be found, under Policy ¶ 4(b)(iv), where a respondent uses a domain name that mimics a complainant’s own website confusing users into believing an affiliation between a respondent’s website and compliant. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Respondent’s resolving websites sell Complainant’s products and incorporate not only Complainant’s MERRELL and SAUCONY marks in the domain name, but also Complainant’s marks, including logos, on the resolving website. See Compl. Ex. C. Through the use of these marks, users may be confused as to the website’s affiliation with Complainant. Therefore, the Panel finds Respondent registered or uses the Disputed Domain Names in bad faith under Policy ¶ 4(b)(iv).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <merrellnorge.com>, <merrelltilbud.com>, <merrellfinland.com>, <merrellslovensko.com>, <merrellsuomi.com>, <merrellturkey.com>, <merrellindirim.com>, <merrelloutletcanada.com>, <merrellskorsverige.com>, <sapatilhasmerrellsaldos.com>, <merrellwebshop.com>, <merrellclearancecanada.com>, <merrellshoessouthafrica.com>, <sauconyaanbieding.com>, <sauconyjazzshoes.com>, <sauconysalg.com>, <saucony-us.com>, <sauconyit.com>, <sauconyhungary.com>, and <sauconyportugal.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 2, 2021
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