DECISION

 

Outdoor Research, LLC v. Cani

Claim Number: FA2509002176575

 

PARTIES

Complainant is Outdoor Research, LLC ("Complainant"), represented by Kevin Costanza of Seed Intellectual Property Law Group LLP, Washington, USA. Respondent is Cani ("Respondent"), Germany.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <outdoorresearchnorge.com>, registered with Paknic (Private) Limited.

 

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 Forum electronically on September 11, 2025; Forum received payment on September 11, 2025.

 

On September 13, 2025, Paknic (Private) Limited confirmed by e-mail to Forum that the <outdoorresearchnorge.com> domain name is registered with Paknic (Private) Limited and that Respondent is the current registrant of the name. Paknic (Private) Limited has verified that Respondent is bound by the Paknic (Private) 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 September 15, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of October 6, 2025 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@outdoorresearchnorge.com. Also on September 15, 2025, 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 October 7, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.

 

Having reviewed the communications records, the Administrative Panel (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 a Response or any other submittal from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant distributes outdoor clothing and recreation products. It has rights in the OUTDOOR RESEARCH mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO). Respondent's <outdoorresearchnorge.com> domain name is identical or confusingly similar to the OUTDOOR RESEARCH mark as it fully incorporates the mark, merely omitting a space and adding the geographic term "norge" and a generic top-level domain (gTLD).

 

Respondent has no rights or legitimate interests in the domain name. Complainant has not authorized or licensed Respondent to use its mark, it has not been commonly known by the domain name, and it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because it resolves to a website that impersonates Complainant and defrauds consumers.

 

Respondent registered and uses the domain name in bad faith. It is using the domain name to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, where it passes off as Complainant and defrauds consumers.

 

B. Respondent

Respondent did not submit a Response in these proceedings. 

 

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 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (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 WIPO Overview is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. The Panel accepts that consensus on this and other issues addressed later in this Decision.

 

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

 

Identical and/or Confusingly Similar

The OUTDOOR RESEARCH mark was registered to Complainant with the USPTO (Reg. No. 5,928,237) on December 3, 2019 (USPTO registration certificate submitted as Complaint Annex 7). Complainant's registration of the OUTDOOR RESEARCH mark establishes 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 <outdoorresearchnorge.com> domain name is identical or confusingly similar to the OUTDOOR RESEARCH mark. It fully incorporates the mark, merely omitting a space and adding the geographic term "norge," the Norwegian word for Norway, and a gTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i). Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) ("Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis."), 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."). 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 name.

 

Further, the addition of descriptive terms that relate to a complainant can actually enhance confusion. That is the case with the domain name involved here. The added term norge suggests that a resolving website will promote the Complainant's Norwegian operations. Adding it to Complainant's mark in the domain name enhances the confusing similarity. Avaya, Inc., v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255, (Forum May 4, 2015) ("Prior UDRP panels have found consistently that the addition of a geographic term of this sort, when added to a domain name that is otherwise identical to the mark at issue, creates a confusing similarity. The reason why this is so is that it gives the impression to the internet user that it relates to the activities of Complainant in the geographic region specified and that the domain name will lead to a website dealing with the same subject.").

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the OUTDOOR RESEARCH 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 has used or has made 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 name because (i) Complainant has not authorized or licensed Respondent to use its mark, (ii) it has not been commonly known by the domain name, and (iii) it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because it resolves to a website that impersonates Complainant and defrauds consumers. These allegations are addressed as follows:

 

The WHOIS information provided to Forum by the registrar lists the named Respondent as the registrant of the domain name. This name bears no resemblance to the domain name. 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, 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 Name when the identifying information provided by WHOIS was unrelated to the Domain Name or respondent's use of the same); 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 Panel is satisfied that Respondent has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(ii).

 

Complainant states that it has not licensed or authorized Respondent to use its mark. Complainant has specific competence to make this statement, it is not disputed and is taken as true. 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 Name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name); see also 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 Annex 9 contains screenshots of the website resolving from the domain name. The site represents itself as sponsored by Complainant or an authorized affiliate, using a very close facsimile of Complainant's registered OR design mark and the name OUTDOOR RESEARCHNORGE in the distinctive font used by Complainant on its website (screenshot submitted as Complaint Annex 8). It advertises outdoor clothing branded as Complainant's using photographic images that while not identical to photos on Complainant's website are very similar in appearance, subject matter (large photos of people engaged in outdoor recreation) and feel. The site is not an exact copy or duplicate of Complainant's website, but it is designed and intended to convey the impression that it is operated and sponsored by Complainant or an authorized affiliate. Respondent is passing off as and competing with Complainant. Passing off as a complainant and offering to sell the complainant's products does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) ("The usage of Complainant's NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name."); see also Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).").

 

Complaint Annex 10 contains a copy of an email sent to Complainant by an individual who purchased a hat from Respondent's website but never received it. This individual stated that he has been defrauded and wanted Complainant to be aware of this activity at Respondent's site. Using a confusingly similar domain name to engage in theft by fraud, taking purchase money for goods purportedly sold but not delivering them, is wholly inconsistent with any notion of a bona fide offering of goods or services or fair use. 

 

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 name.

 

Registration and Use in Bad Faith

Policy ¶ 4(a)(iii) requires Complainant to prove that the domain name has been registered or is being used 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 which 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 concept of bad faith as illustrated in the above four subparagraphs necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of the complainant. The respondent must intentionally have targeted the complainant's mark. Such subjective intent would in turn require that the respondent actually knew of the complainant and its rights in the relevant mark when it registered the domain name. Renu Medispa, LLC v Angela Sattler/Aesthetics, FA 2143814 (Forum Apr. 28, 2025) ("A foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant or its claimed trademark at the time it registered the disputed domain name."). 

 

In attempting to discern actual knowledge and a subjective bad faith intent, panels have looked at many different types of evidence, including but not limited to use of a domain name in direct competition with a trademark owner, impersonation, the parties operating in the same market segment, the parties being physically located in the same general geographic area, a pattern of bad faith conduct, actual prior association between or among the parties, the distinctive or famous nature of the trademark, suggesting that any similarity is not happenstance. Importantly, allegations about a respondent's subjective intention are not evidence in this regard.

 

The evidence in this case conclusively demonstrates that Respondent had actual knowledge of Complainant when it registered the domain name in March 2023 (WHOIS printout submitted as Complaint Annex 2 shows registration date). Complainant had by then been using the OUTDOOR RESEARCH mark at least since the early 1980s according to its website and corroborated by the 1981 first use date shown on the USPTO registration certificate submitted as Complaint Annex 4. More tellingly, Respondent had to have had actual knowledge of Complainant and its mark in order to impersonate it. Respondent had actual knowledge of Complainant when it registered the domain name and it selected the domain name with the intent to target this Complainant.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis supports a finding of bad faith registration and use based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by passing off as Complainant and offering to sell Complainant's products, Respondent is using the confusingly similar domain name to attract, for commercial gain, Internet users to his company's web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of that website. It commercial gain results from collecting money from the customer and not delivering the goods. Respondent's conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (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)."); see also Blue Ridge Knives, Inc. v. Qifeng Wang, FA 2098954 (Forum June 14, 2024) (finding bad faith when a domain name "incorporate[d] [a] Complainant's registered mark" and was "used for a misleading website that attempt[ed] to pass off as Complainant to offer for sale competing and likely counterfeit or nonexistent products.").

 

Next, as discussed above, Respondent is using the domain name to pass off as Complainant. This does not fit precisely within any of the scenarios listed 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. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

Respondent's registration and use of the confusingly similar domain name to engage in theft by fraud is further evidence of its bad faith.

 

For the reasons above set forth above, the Panel finds that Respondent registered and is using the domain name 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 <outdoorresearchnorge.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Charles A. Kuechenmeister, Panelist

October 8, 2025