DECISION

 

Wolverine World Wide, Inc. v. Dieter Hofmann / Jonas Friedman / Marko Freytag / Anja Jung / Luca Decker / Lea Schultz / Mathias Beckenbauer / Jana Schwartz / Michelle Strauss / Scholz Jessica / Scherer Markus / Domain Admin / Whoisprotection.cc / Gerber Leah / Super Privacy Service LTD c/o Dynadot / Dietrich Robert / Laber Christiane

Claim Number: FA2106001950760

 

PARTIES

Complainant is Wolverine World Wide, Inc. (“Complainant”), represented by Malaina J Weldy of Warner Norcross + Judd LLP, Michigan, USA.  Respondent is Dieter Hofmann / Jonas Friedman / Marko Freytag / Anja Jung / Luca Decker / Lea Schultz / Mathias Beckenbauer / Jana Schwartz / Michelle Strauss / Scholz Jessica / Scherer Markus / Domain Admin / Whoisprotection.cc / Gerber Leah / Super Privacy Service LTD c/o Dynadot / Dietrich Robert / Laber Christiane (“Respondent”), Germany.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <sauconyfiyat.com>, <sauconyhushop.com>, <sauconyireland.com>, <sauconyshoescouk.com>, <saucony-hu.com>, <saucony-sale.com>, <saucony-sverige.com>, <sauconysaleindia.com>, <saucony-india.com>, <sauconyoutletgreece.com>, <saucony-romania.com>, <sauconysklep.com>, <sauconyitaly.com>, <sauconymexico.com>, <sauconynederland.com>, <sauconyshoescanada.com>, <sauconynewzealand.com>, <sauconyshoesonsale.com>, <saucony-canada.com>, and <sauconyuksale.com>, registered with NameSilo, LLC, MAT BAO CORPORATION, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, 1API GmbH, NETIM, and Gransy, s.r.o.

 

PANEL

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 12, 2021; the Forum received payment on June 12, 2021.

 

On June 14, 2021; June 15, 2021; June 16, 2021; June 17, 2021; June 18, 2021, NameSilo, LLC, MAT BAO CORPORATION, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, 1API GmbH, NETIM, and Gransy, s.r.o. confirmed by e-mail to the Forum that the <sauconyfiyat.com>, <sauconyhushop.com>, <sauconyireland.com>, <sauconyshoescouk.com>, <saucony-hu.com>, <saucony-sale.com>, <saucony-sverige.com>, <sauconysaleindia.com>, <saucony-india.com>, <sauconyoutletgreece.com>, <saucony-romania.com>, <sauconysklep.com>, <sauconyitaly.com>, <sauconymexico.com>, <sauconynederland.com>, <sauconyshoescanada.com>, <sauconynewzealand.com>, <sauconyshoesonsale.com>, <saucony-canada.com>, and <sauconyuksale.com> domain names (the Domain Names) are registered with NameSilo, LLC; MAT BAO CORPORATION; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH, NETIM, and Gransy, s.r.o. and that Respondents are the current registrants of the names.  NameSilo, LLC, MAT BAO CORPORATION, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, 1API GmbH, NETIM, and Gransy, s.r.o. have verified that Respondents are is bound by the NameSilo, LLC, MAT BAO CORPORATION, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, 1API GmbH, NETIM, and Gransy, s.r.o. registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 12, 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@sauconyfiyat.com, postmaster@sauconyhushop.com, postmaster@sauconyireland.com, postmaster@sauconyshoescouk.com, postmaster@saucony-hu.com, postmaster@saucony-sale.com, postmaster@saucony-sverige.com, postmaster@sauconysaleindia.com, postmaster@saucony-india.com, postmaster@sauconyoutletgreece.com, postmaster@saucony-romania.com, postmaster@sauconysklep.com, postmaster@sauconyitaly.com, postmaster@sauconymexico.com, postmaster@sauconynederland.com, postmaster@sauconyshoescanada.com, postmaster@sauconynewzealand.com, postmaster@sauconyshoesonsale.com, postmaster@saucony-canada.com, postmaster@sauconyuksale.com.  Also on June 21, 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 July 19, 2021, in response to a request from the Panel, Complainant submitted an Additional Submission.

 

On July 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS AND DOMAIN NAMES

Complainant alleges that all of the Domain Names are effectively controlled by the same person.  Paragraph 3(c) of 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.”  All of the Domain Names are registered to different persons at different addresses in Europe, Asia and North America (some of them to privacy services), but a person listed as a registrant of one of the Domain Names sent an email to the Forum shortly after a copy of the Complaint was served upon her in which she stated that she did not register the Domain Name showing for her on the records of the registrar (or any of the other Domain Names) and was concerned that someone had stolen her identity. [i]  This, taken together with the information discussed below strongly suggests that all of the Domain Names were falsely registered in the names of persons who did not register them.  Additionally, all but one of the Domain Names resolve to web pages which are very similar in nature and purport to offer Saucony brand shoes for sale.  Groups of the web pages have identical photos of models and shoes, with identical tag lines such as “You.  But Faster,” “Hit the Trails at Peak Speed,” “It’s a Vibe,” “Get into Your Comfort Zone” and the like.  Many if not all of them contain Shipping and Returns instructions which are virtually identical.  One Domain Name, <saucony-sale.com> resolves to an inactive web site. (Complaint Exhibit C).  Likewise, groups of the Domain Names are registered with the same registrars.  The naming convention of many of the Domain Names is identical in that the SAUCONY mark is followed by the name of a country and in some cases generic words which are associated with the selling of goods, such as “sale,” “price” and the like.  The Domain Names share IP addresses portions of which are identical.  On these facts the Panel finds that all 20 Domain Names are registered to the same person or entity and will proceed as to all of them. 

 

PARTIES' CONTENTIONS

A. Complainant

Complainant and its subsidiaries are leaders in the athletic footwear industry.  Complainant has rights in the SAUCONY mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”).  All of the Domain Names are confusingly similar to Complainant’s SAUCONY mark because they incorporate the mark in its entirety, differing only by the addition of some generic or geographic term, some including a hyphen, and each adding the “.com” generic top-level domain (“gTLD”).

 

Respondent has no rights or legitimate interests in the Domain Names.  It is not commonly known by any of the Domain Names and is not affiliated with Complainant or authorized to use its SAUCONY mark.  Additionally, Respondent does not use any of the Domain Names for any bona fide offer of goods or services, or for any legitimate noncommercial or fair use.  Instead, Respondent uses each of the disputed domain names to offer goods which compete with Complainant’s business.

 

Respondent registered and is using the Domain Names in bad faith primarily to pass off as and compete with Complainant.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

C. Additional Submissions

The SAUCONY mark, originally registered to Hyde Athletic Industries, Inc., was subsequently assigned to Saucony IP Holdings, LLC.  That firm is a wholly-owned subsidiary of Complainant and has expressly authorized Complainant to bring and maintain this proceeding on its behalf.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)  the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)  the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences as 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.  Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.  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”), WIPO Overview 3.0, at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The SAUCONY mark was registered to HYDE ATHLETIC INDUSTRIES, INC. with the USPTO (Reg. No. 1,356,744) on August 27, 1985 (Complaint Exhibit A) and was subsequently assigned to Saucony IP Holdings, LLC.  That firm is a wholly-owned subsidiary of Complainant and has expressly authorized Complainant to bring and maintain this proceeding on its behalf (Complainant Additional Submission).  Complainant being the corporate parent of and having been authorized by the owner of the SAUCONY mark to bring this proceeding on its behalf, it has established its rights in that mark for the purposes of Policy ¶ 4(a)(i).  DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). 

 

Respondent’s <sauconyfiyat.com>, <sauconyhushop.com>, <sauconyireland.com>, <sauconyshoescouk.com>, <saucony-hu.com>, <saucony-sale.com>, <saucony-sverige.com>, <sauconysaleindia.com>, <saucony-india.com>, <sauconyoutletgreece.com>, <saucony-romania.com>, <sauconysklep.com>, <sauconyitaly.com>, <sauconymexico.com>, <sauconynederland.com>, <sauconyshoescanada.com>, <sauconynewzealand.com>, <sauconyuksale.com>, <sauconyshoesonsale.com>, and <saucony-canada.com> Domain Names are confusingly similar to Complainant’s SAUCONY mark.  Each of the Domain Names incorporates the SAUCONY mark in its entirety, merely adding the name of a country in some cases, generic words associated with the marketing or sale of goods (“shop,” “price,” “outlet,” “shoes,” “on sale” and the like) in some cases, and a hyphen in others, or combinations of these words and figures, plus the gTLD “.com.”  These changes do not distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i).  General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis), Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark), Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.”  Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.

 

For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the SAUCONY mark, in which Complainant has substantial and demonstrated rights.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it.  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”).  If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests.  If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety.  At all times, the burden of proof remains on the complainant.  WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)            Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii)          The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)         The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent is not commonly known by the Domain Names, (ii) Respondent has no affiliation or connection with Complainant and Complainant has not licensed or authorized it to use its mark, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the Domain Names resolve to web sites which pass off as Complainant and purport to sell Complainant’s products.  These allegations are addressed as follows:

 

The information furnished to the Forum by the registrars lists the persons named as Respondents herein, together with three other individuals, as the registrants of the Domain Names.  None of these names bears any resemblance to any of the Domain Names.  Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent.  In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name.  Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), 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).  The Panel is satisfied that none of the named Respondents has been commonly known by any of the Domain Names for the purposes of Policy ¶ 4(c)(ii).

 

Complainant states that Respondent is not affiliated or connected with Complainant and that it has never authorized or permitted Respondent to use its mark.  Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.  In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name.  IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the 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 the at-issue domain name.”).

 

Complaint Exhibit C contains screenshots of pages of the web sites resolving from the Domain Names.  Except for the <saucony-sale.com> Domain Name, which resolves to an inactive web site, all of the Domain Names resolve to web sites which are very similar to each other in layout and general appearance.  They all prominently display the SAUCONY mark, along with its River and New River logos and purport to offer Saucony brand shoes for sale.  The active web sites clearly convey the impression that they are either sponsored by Complainant or represent an authorized dealer of Complainant’s products.  Passing off as and purporting to sell a complainant’s goods is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii).  Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business), Nokia Corp. v. Eagle,  FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).

 

Complaint Exhibit C also contains a screenshot of the web site resolving from the <saucony-sale.com> Domain Name.  It is a parking page stating, “This site can’t be reached.”  Respondent is making no active use of this Domain Name.  Passive holding of an infringing domain name does not confer rights under Policy ¶¶ 4(c)(i) or (iii), as it does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’  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 evidence furnished by Complainant establishes the required prima facie case.  On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.

 

Registration and Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name.  They are as follows:

 

(i)            circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii)          the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)         the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)       by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.

 

The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by administrative panels over the years.  First, Respondent is using the Domain Names to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites.  The evidence does not establish whether Respondent is actually selling Complainant’s products (or a counterfeit) or fraudulently representing that it does, collecting money from the customer and then not delivering the products.  Under either scenario, however, Respondent’s conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use.  AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)), Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).

 

Second, Respondent registered and is using the Domain Names, which fully incorporate the well-known SAUCONY mark.  As discussed above, however, Respondent has no connection with that mark or its owner, the Complainant.  This may not fit precisely within any of the circumstances set forth in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties.  Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005).  Given the nonexclusive nature of Policy ¶ 4(b), the use of a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of opportunistic bad faith.  Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”), Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum Mar. 3, 2020) (“the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.”). 

 

Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names in the period between December 1, 2020 and February 25, 2021 (Complaint Exhibit B shows creation dates).  Complainant’s SAUCONY mark was registered in 1985 and had been used in commerce at least as early as 1980 (Complaint Exhibit A).  Respondent copied it verbatim into the Domain Names, passes off as Complainant and purports to offer Complainant’s goods using Complainant’s name and registered logos.  Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  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).

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sauconyfiyat.com>, <sauconyhushop.com>, <sauconyireland.com>, <sauconyshoescouk.com>, <saucony-hu.com>, <saucony-sale.com>, <saucony-sverige.com>, <sauconysaleindia.com>, <saucony-india.com>, <sauconyoutletgreece.com>, <saucony-romania.com>, <sauconysklep.com>, <sauconyitaly.com>, <sauconymexico.com>, <sauconynederland.com>, <sauconyshoescanada.com>, <sauconynewzealand.com>, <sauconyuksale.com>, <sauconyshoesonsale.com>, and <saucony-canada.com> Domain Names be TRANSFERRED from Respondent to Complainant.

 

 

Charles A. Kuechenmeister, Panelist

July 19, 2021

 



[i] This person is not named as a Respondent in this matter, nor are two other individuals shown on the records of the registrars as having registered one of the Domain Names.  This omission is noted only for information purposes and is not deemed material for the purposes of adjudicating the matters at issue in this proceeding.

 

 

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