DECISION

 

Athletic Propulsion Labs LLC v. Client Care / Web Commerce Communications Limited / Leon Harrison / Natasha Cole / Edward Connolly / Alejandra Vega / Luca Reiniger / Klaus Hertzog / Johanna Holzman

Claim Number: FA2402002084630

 

PARTIES

Complainant is Athletic Propulsion Labs LLC ("Complainant"), represented by Matthew D. Witsman of Foley & Lardner LLP, Illinois, USA. Respondent is Client Care / Web Commerce Communications Limited / Leon Harrison / Natasha Cole / Edward Connolly / Alejandra Vega / Luca Reiniger / Klaus Hertzog / Johanna Holzman ("Respondent"), Multiple Locations.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <apltrainersuksale.com>, <aplchile.com>, <apldanmark.com>, <apldenmark.com>, <aplathleticireland.com>, <aplportugalsale.com>, <aplromania.com>, <aplshoes-australia.com>, <aplshoescanadasale.com>, <aplshoesoutletstore.com>, <aplshoespriceinph.com>, <aplshoessg.com> and <aplshoessouthafrica.com> ('the Domain Names'), registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, Hello Internet Corp and PSI-USA, Inc. dba Domain Robot.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 20, 2024; Forum received payment on February 20, 2024.

 

On February 21, 2024 and February 22, 2024, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, Hello Internet Corp and PSI-USA, Inc. dba Domain Robot confirmed by e-mail to Forum that the <apltrainersuksale.com>, <aplchile.com>, <apldanmark.com>, <apldenmark.com>, <aplathleticireland.com>, <aplportugalsale.com>, <aplromania.com>, <aplshoes-australia.com>, <aplshoescanadasale.com>, <aplshoesoutletstore.com>, <aplshoespriceinph.com>, <aplshoessg.com> and <aplshoessouthafrica.com> Domain Names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, Hello Internet Corp and PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, Hello Internet Corp and PSI-USA, Inc. dba Domain Robot have verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, Hello Internet Corp and PSI-USA, Inc. dba Domain Robot registration agreements 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 February 26, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2024 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@apltrainersuksale.com, postmaster@aplchile.com, postmaster@apldanmark.com, postmaster@apldenmark.com, postmaster@aplathleticireland.com, postmaster@aplportugalsale.com, postmaster@aplromania.com, postmaster@aplshoes-australia.com, postmaster@aplshoescanadasale.com, postmaster@aplshoesoutletstore.com, postmaster@aplshoespriceinph.com, postmaster@aplshoessg.com and postmaster@aplshoessouthafrica.com. Also on February 26, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 19, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist (the "Panel").

 

On March 19, 2024 the Panel requested that the Complainant articulate more clearly with respect to each of the Domain Names the Complainant's arguments and evidence that the Domain Names were all owned by the same entity or person, and were all registered and used in bad faith. On March 26, 2024 the Complainant provided an additional submission in this regard. The Respondent was given three days from receipt of the additional submission to request further time to comment, but did not make any such request.    

 

Having reviewed the communications records, the Panel finds that 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, 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

In the instant proceedings, 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." The Complainant has shown that the Domain Names are linked because the sites to which they point bear elements of the same content and the Domain Names share a number of WHOIS details in common which when looked at overall show a link between all of the Domain Names. The Respondent has not answered this Complainant or challenged any of these assertions.The Panel finds it more likely than not that the Domain Names have been registered by the same entity and this Complaint may proceed against all of them.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant owns the trade mark APL in both word and logo form registered, inter alia, in the USA for footwear since 2009.

 

The Domain Names registered in 2023 are confusingly similar to the Complainant's trade mark containing it in its entirety and merely adding generic term(s) and the gTLD .com which do not prevent said confusing similarity between the Domain Names and the Complainant's mark.

 

Respondent is not commonly known by the Domain Names and is not authorised by the Complainant.

 

The web sites attached to the Domain Names purport to sell the Complainant's products using the Complainant's trade mark in its logo form as a masthead and photos taken from the Complainant's site without permission. Since Internet users will be duped into believing the sites attached to the Domain Names are official this is not legitimate. It is registration and use in bad faith confusing and diverting Internet users for commercial gain. The use of the Complainant's logo and pictures from the Complainant's web site shows the Respondent had actual knowledge of the Complainant, its rights, business and services.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant owns the trade mark APL in both word and logo form registered, inter alia, in the USA for footwear since 2009.

 

The Domain Names registered in 2023 are attached to web sites purporting to sell the Complainant's products using the Complainant's trade mark in its logo form as a masthead and photos taken from the Complainant's site without permission.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The Domain Named consists of the Complainant's APL mark (which is registered in USA for footwear since 2009), generic term(s) and the gTLD .com.

 

Previous panels have found confusing similarity when a respondent merely adds a generic term or terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term(s) in the Domain Names in this case does not prevent confusing similarity between any of the Domain Names and the Complainant's registered trade mark.

 

The gTLD .com does not serve to prevent confusing similarity between the Domain Names and the Complainant's mark. See Red Hat Inc v Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Names are each confusingly similar to the Complainant's registered mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names or any of them. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (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 use is commercial and so cannot be non-commercial legitimate fair use.

 

The web sites attached to the Domain Names use the Complainant's APL mark in its logo form as a masthead and photos taken from the Complainant's web site to suggest that they are sites operated by or authorised by the Complainant when they are not. The Panel finds this use is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.)

 

The Respondent has not answered the Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

In the opinion of the panelist the use made of the Domain Names in relation to the Respondent's sites is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant as they offer products under the Complainant's mark in its logo form used as a masthead and photos from the Complainant's web site to represent falsely that the sites attached to the Domain Names are official in a manifest attempt to deceive. The use of the Complainant's logos and photos on the sites shows that the Respondent has actual knowledge of the Complainant and its business, products and rights.

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion, inter alia, with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web sites likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (iv).

 

DECISION

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

 

Accordingly, it is Ordered that the <apltrainersuksale.com>, <aplchile.com>, <apldanmark.com>, <apldenmark.com>, <aplathleticireland.com>, <aplportugalsale.com>, <aplromania.com>, <aplshoes-australia.com>, <aplshoescanadasale.com>, <aplshoesoutletstore.com>, <aplshoespriceinph.com>, <aplshoessg.com> and <aplshoessouthafrica.com> Domain Names be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: March 31, 2024