DECISION

 

Wolverine Outdoors, Inc. v. Antje Fassbinder / Peter Zimmer / Silke Fisher / Andrea Pabst / Ralf Fleischer/ Seiler Nadine / Kuefer Katharina / Mahler Andrea / Schwab Patrick / Julius Bergman / Ebersbach Diana / Tom Wexler / Katharina Baum / Sabine Bruckdorfer / Lea Schaefer / Felix Waechter / Dominika Stryckova / Thorsten Kirsch / Janina Konig / Kenneth Romero / Claudia Reinhardt / Domain Admin / Whoisprotection.cc / Web Commerce Communications Limited / Client Care / Montalvo Ortiz / Ortiz Montalvo

 

Claim Number: FA2107001954954

 

PARTIES

Complainant is Wolverine Outdoors, Inc. (“Complainant”), represented by Malaina J Weldy of Warner Norcross + Judd LLP, Michigan, USA. Respondent is Antje Fassbinder / Peter Zimmer / Silke Fisher / Andrea Pabst / Ralf Fleischer/ Seiler Nadine / Kuefer Katharina / Mahler Andrea / Schwab Patrick / Julius Bergman / Ebersbach Diana / Tom Wexler / Katharina Baum / Sabine Bruckdorfer / Lea Schaefer / Felix Waechter / Dominika Stryckova / Thorsten Kirsch / Janina Konig / Kenneth Romero / Claudia Reinhardt / Domain Admin / Whoisprotection.cc / Web Commerce Communications Limited / Client Care / Montalvo Ortiz / Ortiz Montalvo (“Respondent”), Germany.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names here at issue are <merrellargentinaoutlet.com>, <merrellargentina-outlet.com>, <merrellitalia.org>, <merrell-italia.org>, <merrellitaliaoutlet.com>, <merrell-mexico.com>, <botasmerrellmexico.com>, <merrellshoesaus.com>, <merrellstoresmelbourne.com>, <merrellshoesnewzealand.com>, <merrell-uk.com>, <merrelluklondon.com>, <merrellshoescanada.com>, <merrellshoesindiain.com>, <merrellwalkingshoesireland.com>, <merrellirelandshoes.com>, <merrell-espana.com>, <merrellsg.com>, <merrellmoab.com>, <merrellclearanceshoes.com>, <merrellbelgiebe.com>, <outdoormerrell.com>, <stunningmerrell.com>, <zapatillasmerrelloutlet.com>, <curlymerrell.com>, <handsomemerrell.com>, <prettymerrell.com>, <comelymerrell.com>, <merrelloutletespana.com>, <merrellschoenenkopen.com>, <merrellbillig.com>, <merrellbutik.com>, <merrellcanadasandals.com>, <merrelloutlet-es.com>, <merrellscanada.com>, <merrellbootssouthafrica.com>, <mooremerrell.com>, <merrellforsale.com>, <merrellsaleaustralia.com>, <merrellshoesmelbourne.com>, <merrellcanadas.com>, <merrell-ireland.com>, <merrellshopdanmark.com>, <merrellmoabireland.com>, <merrellshoessalenz.com>, <merrell-chile.com>, <zapatosmerrellcolombia.com>, <merrellshoesclearanceaustralia.com>, <merrellvintersko.com>, and <merrellsaleus.com>, registered with Gransy, s.r.o.; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH; NameSilo, LLC; NETIM SARL; MAT BAO CORPORATION; CNOBIN INFORMATION TECHNOLOGY LIMITED.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 13, 2021; the Forum received payment on July 13, 2021.

 

On July 14, 2021, July 15, 2021, July 16, 2021, July 19, 2021, and July 21, 2021, Gransy, s.r.o.; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH; NameSilo, LLC; NETIM SARL; MAT BAO CORPORATION; CNOBIN INFORMATION TECHNOLOGY LIMITED confirmed via e-mail messages addressed to the Forum that the domain names <merrellargentinaoutlet.com>, <merrellargentina-outlet.com>, <merrellitalia.org>, <merrell-italia.org>, <merrellitaliaoutlet.com>, <merrell-mexico.com>, <botasmerrellmexico.com>, <merrellshoesaus.com>, <merrellstoresmelbourne.com>, <merrellshoesnewzealand.com>, <merrell-uk.com>, <merrelluklondon.com>, <merrellshoescanada.com>, <merrellshoesindiain.com>, <merrellwalkingshoesireland.com>, <merrellirelandshoes.com>, <merrell-espana.com>, <merrellsg.com>, <merrellmoab.com>, <merrellclearanceshoes.com>, <merrellbelgiebe.com>, <outdoormerrell.com>, <stunningmerrell.com>, <zapatillasmerrelloutlet.com>, <curlymerrell.com>, <handsomemerrell.com>, <prettymerrell.com>, <comelymerrell.com>, <merrelloutletespana.com>, <merrellschoenenkopen.com>, <merrellbillig.com>, <merrellbutik.com>, <merrellcanadasandals.com>, <merrelloutlet-es.com>, <merrellscanada.com>, <merrellbootssouthafrica.com>, <mooremerrell.com>, <merrellforsale.com>, <merrellsaleaustralia.com>, <merrellshoesmelbourne.com>, <merrellcanadas.com>, <merrell-ireland.com>, <merrellshopdanmark.com>, <merrellmoabireland.com>, <merrellshoessalenz.com>, <merrell-chile.com>, <zapatosmerrellcolombia.com>, <merrellshoesclearanceaustralia.com>, <merrellvintersko.com>, and <merrellsaleus.com> are registered with Gransy, s.r.o.; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH; NameSilo, LLC; NETIM SARL; MAT BAO CORPORATION; CNOBIN INFORMATION TECHNOLOGY LIMITED and that Respondent is the current registrant of the domain names.  Gransy, s.r.o.; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH; NameSilo, LLC; NETIM SARL; MAT BAO CORPORATION; CNOBIN INFORMATION TECHNOLOGY LIMITED have verified that Respondent is bound by the Gransy, s.r.o.; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH; NameSilo, LLC; NETIM SARL; MAT BAO CORPORATION; CNOBIN INFORMATION TECHNOLOGY LIMITED 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 July 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2021, by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to the attention of postmaster@merrellargentinaoutlet.com, postmaster@merrellargentina-outlet.com, postmaster@merrellitalia.org, postmaster@merrell-italia.org, postmaster@merrellitaliaoutlet.com, postmaster@merrell-mexico.com, postmaster@botasmerrellmexico.com, postmaster@merrellshoesaus.com, postmaster@merrellstoresmelbourne.com, postmaster@merrellshoesnewzealand.com, postmaster@merrell-uk.com, postmaster@merrelluklondon.com, postmaster@merrellshoescanada.com, postmaster@merrellshoesindiain.com, postmaster@merrellwalkingshoesireland.com, postmaster@merrellirelandshoes.com, postmaster@merrell-espana.com, postmaster@merrellsg.com, postmaster@merrellmoab.com, postmaster@merrellclearanceshoes.com, postmaster@merrellbelgiebe.com, postmaster@outdoormerrell.com, postmaster@stunningmerrell.com, postmaster@zapatillasmerrelloutlet.com, postmaster@curlymerrell.com, postmaster@handsomemerrell.com, postmaster@prettymerrell.com, postmaster@comelymerrell.com, postmaster@merrelloutletespana.com, postmaster@merrellschoenenkopen.com, postmaster@merrellbillig.com, postmaster@merrellbutik.com, postmaster@merrellcanadasandals.com, postmaster@merrelloutlet-es.com, postmaster@merrellscanada.com, postmaster@merrellbootssouthafrica.com, postmaster@mooremerrell.com, postmaster@merrellforsale.com, postmaster@merrellsaleaustralia.com, postmaster@merrellshoesmelbourne.com, postmaster@merrellcanadas.com, postmaster@merrell-ireland.com, postmaster@merrellshopdanmark.com, postmaster@merrellmoabireland.com, postmaster@merrellshoessalenz.com, postmaster@merrell-chile.com, postmaster@zapatosmerrellcolombia.com, postmaster@merrellshoesclearanceaustralia.com, postmaster@merrellvintersko.com and postmaster@merrellsaleus.com.  Also, on July 27, 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 August 18, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

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 here at issue are the same person or entity, which is operating under several aliases. Complainant therefore requests that all six domain name registrants be treated in this proceeding for all purposes as a single Respondent.  In support of this request, Complainant asserts the following:

 

i.        46 of the 50 domains were registered in 2021, with several registered on the same day (e.g., six were registered on June 8, 2021, five on June 28, 2021, and four on June 1, 2021).

 

ii.      16 of the 50 domain names have the same IP location of California – San Jose – Cloudflare Inc.; 11 list California – San Francisco – Cloudflare Inc.; 8 list Valencia – Valencia – Sa; and 8 list Delaware –Wilmington.

 

iii.     several of the domain names have identical IP addresses (e.g., merrellargentinaoutlet.com, merrellargentina-outlet.com, and merrellsg.com all have the IP address: 104.160.5.156 and merrellshoesaus.com, merrellshoescanada.com, merrellmoab.com, and merrellclearanceshoes.com all have the IP address: 196.245.56.171).

 

iv.     several of the domain names have identical homepages: merrellargentinaoutlet.com and merrellargentina-outlet.com (the first now resolves to the latter); merrellitalia.org, merrell-italia.org, and merrellirelandshoes.com (the first now resolves to the second); merrellitaliaoutlet.com, merrellsg.com, and merrelloutletespana.com; merrelluklondon.com and merrellbelgiebe.com; outdoormerrell.com, handsomemerrell.com, and prettymerrell.com (with botasmerrellmexico.com being nearly identical to those domains); curlymerrell.com and comelymerrell.com; merrell-espana.com and merrelloutlet-es.com; merrellbillig.com and merrellsaleaustralia.com; merrellstoresmelbourne.com and merrellshoesmelbourne.com (which resolves to the former); merrellshoesnewzealand.com, merrell-ireland.com, and merrellshoesclearanceaustralia.com; and merrellbootssouthafrica.com and merrellshopdanmark.com, along with identical language and grammatical errors across websites.

 

v.      the shipping and return information for all 42 resolving domain names uses the phrase “body piercing” or “piercing,” and “clear plastic bag” in referring to non-returnable items, and has similar, unique language and capitalization, including the identical phrases: “If An Item Has Been Engraved We Are Not Able To Offer An Exchange Or Provide A Full Refund. We, However, Offer A 50% Refund,” and “Goods Are Classified As Defective If They Are Received Damaged, Or When A Manufacturing Fault Occurs Within 30 Days Of Purchase.”

 

vi.     all 42 resolving domain names have almost identical privacy policies, with only a few differing words.

 

vii.    the domain names follow the same pattern by using the mark MERRELL followed (or preceded, in ten instances) by a geographical word or a generic word associated with shopping.

 

viii.  27 of the 42 resolving domain names have nearly identical site maps with a mountain design, with 5 of the remaining 15 having identical site maps.

 

Because Respondent does not deny any of 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 throughout to the collective of identified respondents as a single Respondent.

 

PARTIES' CONTENTIONS

A. Complainant

From its beginnings in 1982, Complainant has become one of the world’s leading marketers of high-quality footwear.

 

Complainant holds a registration for the MERRELL trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,337,440, registered May 21, 1985, and renewed most recently as of April 29, 2015.

 

Respondent registered all of the domain names here at issue between January 10, 2020, and July 8, 2021.

 

All of the domain names are confusingly similar to Complainant’s MERRELL trademark.

 

Respondent has not been commonly known by any of the domain names.

 

Complainant has not authorized Respondent to use the MERRELL mark.

 

Respondent does not use any of the domain names for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Instead, Respondent, for its commercial gain, uses the domain names to sell goods in competition with the business of Complainant at websites resolving from the domain names.

 

Respondent lacks both rights to and legitimate interests in any of the domain names.

 

Respondent registered the domain names with knowledge of Complainant’s rights in the MERRELL mark.

 

Respondent both registered and now uses the domain names in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain names registered by Respondent are confusingly similar to a trademark 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.

 

DISCUSSION

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 or legitimate interests in respect of the domain name; and

iii.   the domain name has been 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”).

 

Identical and/or Confusingly Similar

Complainant has rights in the MERRELL trademark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  See, for example, Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017):

 

Complainant has rights in its … service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).

 

This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark 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 central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that all of Respondent’s fifty (50) challenged domain names are confusingly similar to Complainant’s MERRELL trademark.  Each of the domain names incorporates the mark in its entirety, with only the addition of a generic Top Level Domain (“gTLD”) (either “.org” or “.com”) plus a geographic term (such as “argentina” or “mexico”) or a generic term relating to the marketing of goods (such as “outlet” or “shoes”), which imply a connection with Complainant’s business, or the term “moab,” a direct reference to one of Complainant’s brand names, while a handful of the domain names include a hyphen between the mark and an appended term.  These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy.  See, for example, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity notwithstanding that “[t]he disputed domain name … adds a hyphen and the generic term ‘outlet’ to Complainant's registered … mark, and appends the ‘.com’ top-level domain.”).

 

See also Doosan Corporation v. philippe champain, FA 1636675 (Forum October 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).  Also on the point of geographic appendages to a mark, see PepsiCo, Inc. v. Kieran McGarry, D2005-0629 (WIPO August 5, 2005):

 

The Domain Name is comprised of Complainant’s famous mark, …, plus the geographically descriptive term “USA”. The Panel finds that the Domain Name is confusingly similar to Complainant’s mark. Numerous prior decisions under the Policy have held that the mere addition of a descriptive term to a mark (which descriptive term does not contain any pejorative content or otherwise tend to suggest disassociation from the mark) does not negate the confusing similarity between the mark and the domain name.

 

See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of another 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)).

 

Further see 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.

 

And, specifically as to the addition of a hyphen to Complainant’s mark in creating some of the domain names, this is of no significance to our analysis because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result.

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the several contested 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 any of 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 challenged domain names, and that Complainant has not authorized Respondent to use the MERRELL mark.  Moreover, the pertinent WHOIS information identifies the registrants of the domain names only by one or another of the following: Antje Fassbinder / Peter Zimmer / Silke Fisher / Andrea Pabst / Ralf Fleischer/ Seiler Nadine / Kuefer Katharina / Mahler Andrea / Schwab Patrick / Julius Bergman / Ebersbach Diana / Tom Wexler / Katharina Baum / Sabine Bruckdorfer / Lea Schaefer / Felix Waechter / Dominika Stryckova / Thorsten Kirsch / Janina Konig / Kenneth Romero / Claudia Reinhardt / Domain Admin / Whoisprotection.cc / Web Commerce Communications Limited / Client Care / Montalvo Ortiz / or Ortiz Montalvo, 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 any of them 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 contends, without objection from Respondent, that Respondent, for commercial gain, uses the disputed domain names to sell goods in competition with the business of Complainant at websites resolving from the domain names.  This employment is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain names as provided in those subsections of the Policy.  See, for example, Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017):

 

Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

We are persuaded by the evidence that Respondent’s use of the contested domain names, which are confusingly similar to Complainant’s MERRELL mark, is 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 is proof of Respondent’s bad faith in registering and using the domain names.  See, for example, OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum April 26, 2015) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which competed with the business of a UDRP complainant was evidence of bad faith registration and use under Policy ¶ 4(b)(iv)).

 

We are also convinced that Respondent knew of Complainant’s rights in the MERRELL mark when Respondent registered fifty confusingly similar domain names.  This further illustrates Respondent’s bad faith in registering them.  See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018):

 

Respondent’s prior knowledge [of Complainant’s rights in a mark, and, therefore its bad faith registration of a confusingly similar domain name] is evident from … Respondent’s use of its trademark[-]laden domain name to direct … traffic to a website which is a … competitor of Complainant.

 

The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

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 of the following domain names be forthwith TRANSFERRED from Respondent to Complainant:

 

<merrellargentinaoutlet.com>, <merrellargentina-outlet.com>, <merrellitalia.org>, <merrell-italia.org>, <merrellitaliaoutlet.com>, <merrell-mexico.com>, <botasmerrellmexico.com>, <merrellshoesaus.com>, <merrellstoresmelbourne.com>, <merrellshoesnewzealand.com>, <merrell-uk.com>, <merrelluklondon.com>, <merrellshoescanada.com>, <merrellshoesindiain.com>, <merrellwalkingshoesireland.com>, <merrellirelandshoes.com>, <merrell-espana.com>, <merrellsg.com>, <merrellmoab.com>, <merrellclearanceshoes.com>, <merrellbelgiebe.com>, <outdoormerrell.com>, <stunningmerrell.com>, <zapatillasmerrelloutlet.com>, <curlymerrell.com>, <handsomemerrell.com>, <prettymerrell.com>, <comelymerrell.com>, <merrelloutletespana.com>, <merrellschoenenkopen.com>, <merrellbillig.com>, <merrellbutik.com>, <merrellcanadasandals.com>, <merrelloutlet-es.com>, <merrellscanada.com>, <merrellbootssouthafrica.com>, <mooremerrell.com>, <merrellforsale.com>, <merrellsaleaustralia.com>, <merrellshoesmelbourne.com>, <merrellcanadas.com>, <merrell-ireland.com>, <merrellshopdanmark.com>, <merrellmoabireland.com>, <merrellshoessalenz.com>, <merrell-chile.com>, <zapatosmerrellcolombia.com>, <merrellshoesclearanceaustralia.com>, <merrellvintersko.com>, and <merrellsaleus.com>.

 

 

Terry F. Peppard, Panelist

Dated:  August 27, 2021

 

 

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