Wolverine World Wide, Inc. v. Domain Admin / Whoisprotection.cc / Faber Silke / Client Care / Web Commerce Communications Limited / Luca Schwab
Claim Number: FA2112001977385
Complainant is Wolverine World Wide, Inc. (“Complainant”), represented by Malaina J Weldy of Warner Norcross + Judd LLP, Michigan, USA. Respondent is Domain Admin / Whoisprotection.cc / Faber Silke / Client Care / Web Commerce Communications Limited / Luca Schwab (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <merrell-madrid.com>, <merrell-deutschland.com>, <merrelloutletonlineportugal.com>, <merrellno.com>, <bocancimerrell.com>, <merrell-mx.com>, <merrellmoab2canada.com>, <merrellbootsclearance.com>, <merrellsgshoes.com>, <merrellshoeph.com>, <merrellshoesmy.com>, <zapatillasmerrellchile.com>, <zapatosmerrelles.com>, <botasmerrellcolombia.com>, <botymerrellcz.com>, <butymerrellsklep.com>, <merrellbootaustralia.com>, <merrellbootireland.com>, <merrellbootsgreece.com>, <merrellboty.com>, <merrellsingaporeshoes.com>, <merrellpraha.com>, <tigermerrell.com>, <brilliantmerrell.com>, <clearancemerrell.com>, <merrellalennus.com>, <merrellskorbutik.com>, <merrell-kengat.com>, <merrellschuhe.com>, <merrellmexico.com>, <merrellstoresphilippines.com>, <merrelldublin.com>, <merrellphshoes.com>, <merrellwandelschoenensale.com>, <merrellsandalsaustralia.com>, <merrellnorgesalg.com>, <merrellargentina.com>, <merrelloutletargentina.com>, <sauconysverige.com>, <saucony-turkiye.com>, <saucony-shoes-greece.com>, <sauconyadidasi.com>, <sauconybolt.com>, <sauconyshoes-india.com>, <saucony-sklep.com>, <sauconyshoes-canada.com>, <sauconyjapan.com>, <sauconyjazzromania.com>, <sauconytilbud.com>, <kedsaustraliau.com>, <keds-portugal.com>, <sperryshoessale.com>, <sperryshoesindia.com>, <hushpuppiesaustralias.com>, <hushpuppies-argentinas.com>, <hushpuppiesdanmark.com>, <hushpuppiesdenmark.com>, <merrellnzshoes.com>, and <merrellshoesnzsale.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH; NameSilo, LLC.
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 December 16, 2021; the Forum received payment on December 16, 2021.
On December 17, 2021; Dec 20, 2021, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH; NameSilo, LLC confirmed by e-mail to the Forum that the <merrell-madrid.com>, <merrell-deutschland.com>, <merrelloutletonlineportugal.com>, <merrellno.com>, <bocancimerrell.com>, <merrell-mx.com>, <merrellmoab2canada.com>, <merrellbootsclearance.com>, <merrellsgshoes.com>, <merrellshoeph.com>, <merrellshoesmy.com>, <zapatillasmerrellchile.com>, <zapatosmerrelles.com>, <botasmerrellcolombia.com>, <botymerrellcz.com>, <butymerrellsklep.com>, <merrellbootaustralia.com>, <merrellbootireland.com>, <merrellbootsgreece.com>, <merrellboty.com>, <merrellsingaporeshoes.com>, <merrellpraha.com>, <tigermerrell.com>, <brilliantmerrell.com>, <clearancemerrell.com>, <merrellalennus.com>, <merrellskorbutik.com>, <merrell-kengat.com>, <merrellschuhe.com>, <merrellmexico.com>, <merrellstoresphilippines.com>, <merrelldublin.com>, <merrellphshoes.com>, <merrellwandelschoenensale.com>, <merrellsandalsaustralia.com>, <merrellnorgesalg.com>, <merrellargentina.com>, <merrelloutletargentina.com>, <sauconysverige.com>, <saucony-turkiye.com>, <saucony-shoes-greece.com>, <sauconyadidasi.com>, <sauconybolt.com>, <sauconyshoes-india.com>, <saucony-sklep.com>, <sauconyshoes-canada.com>, <sauconyjapan.com>, <sauconyjazzromania.com>, <sauconytilbud.com>, <kedsaustraliau.com>, <keds-portugal.com>, <sperryshoessale.com>, <sperryshoesindia.com>, <hushpuppiesaustralias.com>, <hushpuppies-argentinas.com>, <hushpuppiesdanmark.com>, <hushpuppiesdenmark.com>, <merrellnzshoes.com>, and <merrellshoesnzsale.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH; NameSilo, LLC and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH; NameSilo, LLC has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH; NameSilo, LLC 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 December 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@merrell-madrid.com, postmaster@merrell-deutschland.com, postmaster@merrelloutletonlineportugal.com, postmaster@merrellno.com, postmaster@bocancimerrell.com, postmaster@merrell-mx.com, postmaster@merrellmoab2canada.com, postmaster@merrellbootsclearance.com, postmaster@merrellsgshoes.com, postmaster@merrellshoeph.com, postmaster@merrellshoesmy.com, postmaster@zapatillasmerrellchile.com, postmaster@zapatosmerrelles.com, postmaster@botasmerrellcolombia.com, postmaster@botymerrellcz.com, postmaster@butymerrellsklep.com, postmaster@merrellbootaustralia.com, postmaster@merrellbootireland.com, postmaster@merrellbootsgreece.com, postmaster@merrellboty.com, postmaster@merrellsingaporeshoes.com, postmaster@merrellpraha.com, postmaster@tigermerrell.com, postmaster@brilliantmerrell.com, postmaster@clearancemerrell.com, postmaster@merrellalennus.com, postmaster@merrellskorbutik.com, postmaster@merrell-kengat.com, postmaster@merrellschuhe.com, postmaster@merrellmexico.com, postmaster@merrellstoresphilippines.com, postmaster@merrelldublin.com, postmaster@merrellphshoes.com, postmaster@merrellwandelschoenensale.com, postmaster@merrellsandalsaustralia.com, postmaster@merrellnorgesalg.com, postmaster@merrellargentina.com, postmaster@merrelloutletargentina.com, postmaster@sauconysverige.com, postmaster@saucony-turkiye.com, postmaster@saucony-shoes-greece.com, postmaster@sauconyadidasi.com, postmaster@sauconybolt.com, postmaster@sauconyshoes-india.com, postmaster@saucony-sklep.com, postmaster@sauconyshoes-canada.com, postmaster@sauconyjapan.com, postmaster@sauconyjazzromania.com, postmaster@sauconytilbud.com, postmaster@kedsaustraliau.com, postmaster@keds-portugal.com, postmaster@sperryshoessale.com, postmaster@sperryshoesindia.com, postmaster@hushpuppiesaustralias.com, postmaster@hushpuppies-argentinas.com, postmaster@hushpuppiesdanmark.com, postmaster@hushpuppiesdenmark.com, postmaster@merrellnzshoes.com, postmaster@merrellshoesnzsale.com. Also on December 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 January 16, 2022, 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
In the instant proceedings, Complainant has submitted 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 that the domain names all resolve to the same webpages, many domain names have identical WHOIS information, many domain names have the same IP address, and many of the domain names follow similar patterns of incorporating Complainant’s mark and adding similar words and the “.com” generic top-level domain.
Having considered the evidence and all of the circumstances, the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The proceeding has therefore been properly instituted and may go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant is a footwear company. Complainant has rights in the HUSH PUPPIES, KEDS, SAUCONY, SPERRY, and MERRELL marks (hereinafter “Complainant’s marks”) through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. HUSH PUPPIES Reg. 663, 849, registered Jul. 1, 1958; KEDS Reg. 114,848, registered Jan. 2, 1917; SAUCONY Reg. 1,356, 744, registered Aug. 27, 1985; SPERRY Reg. 732,519, registered June 5, 1962; MERRELL Reg. 1,337,440, registered May 21, 1985). Respondent’s <merrell-madrid.com>, <merrell-deutschland.com>, <merrelloutletonlineportugal.com>, <merrellno.com>, <bocancimerrell.com>, <merrell-mx.com>, <merrellmoab2canada.com>, <merrellbootsclearance.com>, <merrellsgshoes.com>, <merrellshoeph.com>, <merrellshoesmy.com>, <zapatillasmerrellchile.com>, <zapatosmerrelles.com>, <botasmerrellcolombia.com>, <botymerrellcz.com>, <butymerrellsklep.com>, <merrellbootaustralia.com>, <merrellbootireland.com>, <merrellbootsgreece.com>, <merrellboty.com>, <merrellsingaporeshoes.com>, <merrellpraha.com>, <tigermerrell.com>, <brilliantmerrell.com>, <clearancemerrell.com>, <merrellalennus.com>, <merrellskorbutik.com>, <merrell-kengat.com>, <merrellschuhe.com>, <merrellmexico.com>, <merrellstoresphilippines.com>, <merrelldublin.com>, <merrellphshoes.com>, <merrellwandelschoenensale.com>, <merrellsandalsaustralia.com>, <merrellnorgesalg.com>, <merrellargentina.com>, <merrelloutletargentina.com>, <sauconysverige.com>, <saucony-turkiye.com>, <saucony-shoes-greece.com>, <sauconyadidasi.com>, <sauconybolt.com>, <sauconyshoes-india.com>, <saucony-sklep.com>, <sauconyshoes-canada.com>, <sauconyjapan.com>, <sauconyjazzromania.com>, <sauconytilbud.com>, <kedsaustraliau.com>, <keds-portugal.com>, <sperryshoessale.com>, <sperryshoesindia.com>, <hushpuppiesaustralias.com>, <hushpuppies-argentinas.com>, <hushpuppiesdanmark.com>, <hushpuppiesdenmark.com>, <merrellnzshoes.com>, and <merrellshoesnzsale.com> domain names (hereinafter the “disputed domain names”) are identical or confusingly similar to Complainant’s marks as they incorporate the marks in their entirety and add a variety of geographic, descriptive, and generic terms, accompanied by hyphens and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its marks in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses, but instead passes off as Complainant and offers competing products, or inactively holds the disputed domain names’ resolving websites.
Respondent registered and uses the disputed domain names in bad faith. Respondent attracts internet users for commercial gain by passing off as Complainant and offering competing products or services on the disputed domain names’ resolving websites. Respondent registered the domain names with knowledge of Complainant’s rights in its marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company that is engaged in the footwear industry.
2. Complainant has established its rights in the HUSH PUPPIES, KEDS, SAUCONY, SPERRY, and MERRELL marks (hereinafter “Complainant’s marks”) through its registrations with the USPTO (e.g. HUSH PUPPIES Reg. 663, 849, registered Jul. 1, 1958; KEDS Reg. 114,848, registered Jan. 2, 1917; SAUCONY Reg. 1,356, 744, registered Aug. 27, 1985; SPERRY Reg. 732,519, registered June 5, 1962; MERRELL Reg. 1,337,440, registered May 21, 1985). See Compl. Ex. A.
3.Respondent registered the disputed domain names on the following dates:
<merrell-madrid.com> on Apr. 22, 2021, <merrell-deutschland.com> on Apr. 21, 2021, <merrelloutletonlineportugal.com> on July 8, 2021, <merrellno.com> on Oct. 25, 2021, <bocancimerrell.com> on Oct. 14, 2021, <merrell-mx.com> and <merrellmoab2canada.com> on November 26, 2021, <merrellbootsclearance.com> on November 25, 2021, <merrellsgshoes.com>, <merrellshoeph.com>, <merrellshoesmy.com>, <zapatillasmerrellchile.com>, <zapatosmerrelles.com>, <botasmerrellcolombia.com>, <botymerrellcz.com>, <butymerrellsklep.com>, <merrellbootaustralia.com>, <merrellbootireland.com>, and <merrellbootsgreece.com> on Nov. 29, 2021, <merrellboty.com> on Oct. 14, 2021, <merrellsingaporeshoes.com> on July 21, 2021, <merrellpraha.com> on July 15, 2021, <tigermerrell.com> on June 16, 2021, <brilliantmerrell.com> and <clearancemerrell.com> on June 22, 2021, <merrellalennus.com> on June 29, 2021, <merrellskorbutik.com> on May 21, 2021, <merrell-kengat.com> on Nov. 5, 2021, <merrellschuhe.com> on Oct. 13, 2021, <merrellmexico.com> on Mar. 22, 2021, <merrellwandelschoenensale.com> on Oct. 25, 2021, <merrellsandalsaustralia.com> and <merrellnorgesalg.com> on Oct. 26, 2021, <merrellargentina.com> on Mar. 10, 2021, <merrelloutletargentina.com> on June 17, 2021, <sauconysverige.com> on June 28, 2021, <saucony-turkiye.com> on Apr. 15, 2021, <saucony-shoes-greece.com> on Aug. 5, 2021, <sauconyadidasi.com> on Jul. 22, 2021, <sauconybolt.com> on June 21, 2021, <sauconyshoes-india.com>, <saucony-sklep.com>, and <sauconyshoes-canada.com> on Oct. 16, 2021, <sauconyjapan.com> on Oct. 28, 2021, <sauconyjazzromania.com>, <merrellstoresphilippines.com>, and <merrellphshoes.com>, and <merrelldublin.com> on Oct. 26, 2021, <sauconytilbud.com> on Feb. 3, 2021, <kedsaustraliau.com> on Oct. 25, 2021, <keds-portugal.com> on May 25, 2021, <sperryshoessale.com> on Aug. 2, 2021, <sperryshoesindia.com> on Oct. 8, 2021, <hushpuppiesaustralias.com> on Mar. 31, 2021, <hushpuppies-argentinas.com> on Oct. 27, 2021, <hushpuppiesdanmark.com> on Apr. 6, 2021, <hushpuppiesdenmark.com> on Dec. 12, 2021, <merrellnzshoes.com> on Jul. 21, 2021, and <merrellshoesnzsale.com> on Feb. 25, 2021
4. Respondent has used the disputed domain names to pass itself off as Complainant and offers competing products to those of Complainant, or inactively holds the relevant disputed domain names’ resolving websites.
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 claims rights in the HUSH PUPPIES, KEDS, SAUCONY, SPERRY, and MERRELL marks (hereinafter “Complainant’s marks”) through its registrations with the USPTO (e.g. HUSH PUPPIES Reg. 663, 849, registered Jul. 1, 1958; KEDS Reg. 114,848, registered Jan. 2, 1917; SAUCONY Reg. 1,356, 744, registered Aug. 27, 1985; SPERRY Reg. 732,519, registered June 5, 1962; MERRELL Reg. 1,337,440, registered May 21, 1985). See Compl. Ex. A. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Therefore, as the Panel agrees, it finds Complainant has rights in the HUSH PUPPIES, KEDS, SAUCONY, SPERRY, and MERRELL marks for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s HUSH PUPPIES, KEDS, SAUCONY, SPERRY, and MERRELL marks. Complainant argues that Respondent’s disputed domain names are identical or confusingly similar to Complainant’s marks. Under Policy ¶ 4(a)(i), adding generic, descriptive, geographic, and other types of words along with hyphens and a gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The disputed domain names incorporate Complainant’s marks and add a variety of geographic words and acronyms, a variety of footwear related terms, hyphens, and the “.com” gTLD. Therefore, as the Panel agrees, it finds Respondent’s domain names are identical or confusingly similar to Complainant’s marks 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 names 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HUSH PUPPIES, KEDS, SAUCONY, SPERRY, and MERRELL marks and to use them in the disputed domain names, adding various geographic words and acronyms, a variety of footwear related terms and hyphens, which do not negate the confusing similarity between the domain names and the trademarks;
(b) Respondent registered the disputed domain names on the dates corresponding to the respective domain names as set out in the Findings section of this decision;
(c) Respondent has used the disputed domain names to pass itself off as Complainant and offers competing products to those of Complainant, or inactively holds the relevant disputed domain names’ resolving websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its marks in the disputed domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information, or lack thereof where hidden by a WHOIS privacy service, may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s submission that it never authorized or licensed Respondent to use its mark in a disputed domain name. See Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). The WHOIS of record identifies Respondent as “Domain Admin”, “Whois Protection.cc”, “Faber Silke”, “Client Care”, “Web Commerce Communications Limited”, and “Luca Schwab”, and nothing in the record rebuts Complainant’s submission that it never authorized or licensed Respondent to use its marks in the disputed domain names. See Registrar Verification Emails. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as Complainant and offer for sale Complainant’s goods and/or counterfeit goods, or inactively holding a disputed domain name’s resolving website are both not generally considered bona fide offerings of goods or services, nor legitimate noncommercial or fair uses. See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization); see additionally 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 Panel notes Complainant’s screenshots of the disputed domain names’ resolving websites, all of which resolve to one of three pages: a website purporting to offer Complainant’s products for sale, a page with the same error message, and/or another page offering to ship Complainant’s products. See Compl. Ex. C. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses 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 does not have a right or legitimate interest in the disputed domain name.
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 were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the disputed domain names for bad faith attraction of internet users for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to pass off as Complainant and host competing goods or services is generally considered evidence of bad faith attraction for commercial gain. See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). The Panel recalls that many of the disputed domain names purport to offer footwear, including Complainant’s own products, for sale. See Compl. Ex. C. Respondent is therefore using Complainant’s trademarks to sell products other than Complainant’s products which is clearly in bad faith. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain names with bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Secondly, the Panel find that Respondent registered and uses the disputed domain names in bad faith by inactively holding some of the disputed domain names. Inactively holding a disputed domain name may demonstrate evidence of bad faith registration and/or use under 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 contained 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)). The Panel recalls that some of the disputed domain names resolve to pages with no content but the same error message. See Compl. Ex. C. Therefore, as the Panel agrees, it finds Respondent registered and/or uses some of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered the disputed domain names with bad faith actual knowledge of Complainant’s rights in its various marks. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through Respondent’s incorporation of a registered/well-known mark into a disputed domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel recalls that Complainant’s marks are fully incorporated into the disputed domain names, and many of the disputed domain names purport to offer competing products for sale. See Compl. Ex. C.. Therefore, as the Panel agrees, it finds Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the HUSH PUPPIES, KEDS, SAUCON, SPERRY, and MERRELL marks and in view of the conduct that Respondent has engaged in since registering the the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
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 <merrell-madrid.com>, <merrell-deutschland.com>, <merrelloutletonlineportugal.com>, <merrellno.com>, <bocancimerrell.com>, <merrell-mx.com>, <merrellmoab2canada.com>, <merrellbootsclearance.com>, <merrellsgshoes.com>, <merrellshoeph.com>, <merrellshoesmy.com>, <zapatillasmerrellchile.com>, <zapatosmerrelles.com>, <botasmerrellcolombia.com>, <botymerrellcz.com>, <butymerrellsklep.com>, <merrellbootaustralia.com>, <merrellbootireland.com>, <merrellbootsgreece.com>, <merrellboty.com>, <merrellsingaporeshoes.com>, <merrellpraha.com>, <tigermerrell.com>, <brilliantmerrell.com>, <clearancemerrell.com>, <merrellalennus.com>, <merrellskorbutik.com>, <merrell-kengat.com>, <merrellschuhe.com>, <merrellmexico.com>, <merrellstoresphilippines.com>, <merrelldublin.com>, <merrellphshoes.com>, <merrellwandelschoenensale.com>, <merrellsandalsaustralia.com>, <merrellnorgesalg.com>, <merrellargentina.com>, <merrelloutletargentina.com>, <sauconysverige.com>, <saucony-turkiye.com>, <saucony-shoes-greece.com>, <sauconyadidasi.com>, <sauconybolt.com>, <sauconyshoes-india.com>, <saucony-sklep.com>, <sauconyshoes-canada.com>, <sauconyjapan.com>, <sauconyjazzromania.com>, <sauconytilbud.com>, <kedsaustraliau.com>, <keds-portugal.com>, <sperryshoessale.com>, <sperryshoesindia.com>, <hushpuppiesaustralias.com>, <hushpuppies-argentinas.com>, <hushpuppiesdanmark.com>, <hushpuppiesdenmark.com>, <merrellnzshoes.com>, and <merrellshoesnzsale.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 17, 2022
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