WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

La Sportiva S.p.A. v. Name Redacted, Domain Admin, Whoisprotection.cc / Tom Durr, Julian Ertmer, and Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Hartmut Scherf

Case No. D2020-3227

1. The Parties

The Complainant is La Sportiva S.p.A, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.

The Respondents are Name Redacted¹ , Domain Admin, Whoisprotection.cc, Malaysia / Tom Durr, Germany, Julian Ertmer, Germany, and Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Hartmut Scherf, Germany.

2. The Domain Names and Registrars

The disputed domain names <lasportivaaustralia.com> and <lasportivanz.com> are registered with 1API GmbH (the “First Registrar”).

The disputed domain name <lasportivauk.com> is registered with MAT BAO CORPORATION (the “Second Registrar”).

The disputed domain name <lasportivaaustralias.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Third Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 1, 2020, the Center transmitted by email to the First Registrar a request for registrar verification in connection with the disputed domain names <lasportivaaustralia.com> and <lasportivanz.com>. On December 2, 2020, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names <lasportivaaustralia.com> and <lasportivanz.com>, which differed from the named Respondent and contact information in the Complaint.

On December 1, 2020, the Center transmitted by email to the Second Registrar a request for registrar verification in connection with the disputed domain name <lasportivauk.com>. On December 11, 2020, the Second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <lasportivauk.com>, which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on December 14, 2020, providing the registrant and contact information disclosed by the First and Second Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 18, 2020 in which it included also the disputed domain name <lasportivaaustralias.com>.

On December 21, 2020, the Center transmitted by email to the Third Registrar a request for registrar verification in connection with the disputed domain name <lasportivaaustralias.com>. On December 23, 2020, the Third Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <lasportivaaustralias.com>, which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on December 24, 2020, providing the registrant and contact information disclosed by the Third Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amended Complaint on December 28, 2020.

On December 30, 2020, the Center informed the Parties that that there appears to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment, and that the Center will proceed to commencement and formal Complaint notification on that basis.

The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2021.

On January 4, 2021, the Center received an email communication from a third-party email address claiming identity theft. On January 6, 2021, the Center sent a reply, and on January 21, 2021, the Center sent an email communication to the Parties notifying them of its communication with the third party.

None of the Respondents submitted a formal Response. On January 21, 2021, the Center informed the Parties that it will proceed to appoint a panel.

The Center appointed Assen Alexiev as the sole panelist in this matter on February 10, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant started its business in 1928. It is a manufacturer of footwear for all kinds of outdoor activities such as climbing, mountaineering, mountain running and skiing. Its products are widely available in Europe and North America.

The Complainant is the owner of the following trademark registrations for the sign LA SPORTIVA (the “LA SPORTIVA trademark”):

− the International trademark LA SPORTIVA with registration No. 502850, registered on May 12, 1986 for goods in International Class 25;

− the International trademark LA SPORTIVA with registration No. 634504, registered on December 28, 1994 for goods in International Classes 18, 25, and 28;

− the Italian trademark LA SPORTIVA with registration No. 0000642634, registered on December 28, 1994 for goods in International Classes 18, 25, and 28; and

− the European Union Trade Mark LA SPORTIVA with registration No. 000270132, registered on November 9, 1998 for goods in International Classes 18 and 25.

The Complainant is also the owner of the domain name <lasportiva.com>, which it uses for its official website.

The disputed domain name <lasportivauk.com> was registered by the Respondent Tom Durr on September 7, 2020.

The disputed domain name <lasportivaaustralia.com> was registered by the Respondent Julian Ertmer on September 10, 2020.

The disputed domain name <lasportivanz.com> was registered by the Respondent Name Redacted on September 10, 2020.

The disputed domain name <lasportivaaustralias.com> was registered by the Respondent Hartmut Scherf on December 14, 2020.

All of the disputed domain names resolve to websites that display the LA SPORTIVA trademark and offer for sale the Complainant’s products.

5. Parties’ Contentions

A. Complainant

In fact, LA SPORTIVA is a renowned brand and a benchmark for the industry. As a consequence, the trademark and the trade name are well known, not least considering that they have been extensively used by the Complainant for over 90 years. Due to this use, the Complainant has continually developed the goodwill and repute of the LA SPORTIVA trademark and this is an important asset of the company.

The Complainant states that the disputed domain names are confusingly similar to its LA SPORTIVA trademark and to the Complainant’s company name and domain name because each of the disputed domain names reproduces the Complainant’s LA SPORTIVA trademark, combined with a geographical indicator for the United Kingdom, Australia, and New Zealand.

According to the Complainant, the Respondents have no rights or legitimate interests in respect of the disputed domain names, because they have not been authorized to use the LA SPORTIVA trademark, have no relevant trademark rights and have not been known under the disputed domain names. The Complainant adds that the Respondents have never made any bona fide use of the disputed domain names, but use them to host websites that feature the LA SPORTIVA trademark as well as the official logo of the Complainant and apparently sell products allegedly made by the Complainant.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. It points out that the Respondents registered the disputed domain names many decades after the Complainant started using and promoting the LA SPORTIVA trademark in Italy and abroad, and they reproduce this trademark in its entirety combined with geographical indicators. The Complainant adds that the disputed domain names are used to host websites that feature the LA SPORTIVA trademark and the official logo of the Complainant, while apparently selling products allegedly made by the Complainant. The disputed domain name <lasportivaaustralias.com> to which the disputed domain name <lasportivaaustralia.com> redirects, was registered on December 14, 2020, which is 14 days after the Complainant filed its Complaint. In view of the above, the Complainant submits, the disputed domain names were registered with the Complainant’s trademarks and field of activity in mind in an attempt to intentionally create an association with the Complainant and its business.

The Complainant submits that the Respondent’s use of the disputed domain names disrupts the Complainant’s business, because they mislead Internet users and create a likelihood of confusion with the Complainant’s trademarks and domain names. According to the Complainant, the Respondents selected the disputed domain names to trade on the goodwill of the Complainant’s renowned trademarks, to divert internet users looking for the Complainant’s official website and products to its own competing websites, or to resell the disputed domain names.

B. Respondent

None of the Respondents filed a formal Response. A third party sent a communication to the Center, claiming that she had not registered any domain names and that her identity was abused.

6. Discussion and Findings

6.1. Procedural issue – Consolidation of Respondents

The Complainant requests the consolidation of the proceedings in respect of the disputed domain names, maintaining that all of them are under common control. According to the Complainant, the registrants of the disputed domain names took active steps to conceal their identity by using privacy shield companies and by providing incorrect contact details. The Complainant points out that the four Respondents, apparently residing in Germany and having European names, chose email addresses at the same provider, the first part of which email addresses is composed of Chinese names, and provided phone numbers, the dialing codes of which do not correspond to the codes for their physical addresses. The Complainant adds that Internet searches for the Respondents combining their names and addresses show no results, and two out of the four physical addresses indicated by the Respondents appear to be non-existent. The Complainant also notes that the disputed domain names are used to host almost identical websites with the same look and feel, which purport to be official local websites of the Complainant and at the top of their home pages they all display the LA SPORTIVA trademark and logo and the three identical texts “30 days money back guarantee”, “Fast Delivery” and “Lowest Price Guarantee”, written in the same font. Three of the disputed domain names were registered between September 7 and September 10, 2020, while the fourth disputed domain name <lasportivaaustralias.com> was registered after filing of the Complaint and is linked to the other disputed domain names because the disputed domain name <lasportivaaustralia.com> currently redirects to it. According the Complainant, this shows that the Respondents, if not one and the same, are at least linked and that the disputed domain names are under common control.

The Center has discharged its duties to notify the persons listed as registrants of the disputed domain names. None of the listed registrants of the disputed domain names has submitted a formal Response or objected to the consolidation request of the Complainant. The informal communication sent by a third party does not deny the statements made by the Complainant in relation to the consolidation of the disputes in respect of the disputed domain names.

Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple respondents, UDRP panels look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in the content or layout of websites corresponding to the disputed domain names, any naming patterns in the disputed domain names, or other arguments made by the complainant.

The Panel is satisfied that the Complainant has shown good reasons why the consolidation of the Respondents and disputes related to the disputed domain names in a single proceeding is justified and appropriate in the circumstances. Three of the disputed domain names were registered within a very short period of time, and all of them follow the same pattern – a combination of the distinctive LA SPORTIVA trademark with a geographic term, while the websites at all of the disputed domain names are indeed similar in design and content. The Panel notes that the email addresses provided by the Respondents to the Registrars also show similarities. These circumstances show that it is more likely than not that the disputed domain names are under common control.

None of the Respondents has advanced any reasons why it may not be equitable to allow the consolidation of the disputes. It appears that the consolidation would lead to greater procedural efficiency, and the Panel is not aware of any reasons why the consolidation would not be fair and equitable to all parties.

Therefore, the Panel decides to allow the consolidation of the disputes in relation to all of the disputed domain names in the present proceeding.

6.2. Substantive issues

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the Respondents have registered and are using the disputed domain names in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”

None of the Respondents has however submitted a formal Response or disputed the Complainant’s contentions and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the owner of the LA SPORTIVA trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLDs of the disputed domain names.

Each of the disputed domain names incorporates the LA SPORTIVA trademark in combination with the geographic terms or abbreviations “uk” (which is commonly used to refer to the United Kingdom), “nz” (which is commonly used to refer to New Zealand), “australia” or “australias”. As discussed in section 1.8 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to the LA SPORTIVA trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondents have no rights or legitimate interests in the disputed domain names, because they have not been authorized to use the LA SPORTIVA trademark, have no relevant trademark rights and have not been commonly known under the disputed domain names. The Complainant adds that the Respondents have never made any bona fide use of the disputed domain names, but use them to host websites that feature the LA SPORTIVA trademark as well as the official logo of the Complainant and apparently sell products allegedly made by the Complainant. Thus, the Panel finds that the Complainant has established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names.

None of the Respondents has submitted a formal Response. The informal third-party email communication to the Center, dated January 4, 2021, denies any involvement of the Respondent Name Redacted with any of the disputed domain names and claims that she was a victim of identity theft, without disputing any of the Complainant’s contentions in this proceeding.

As discussed in section 2.8.1 of the WIPO Overview 3.0, panels acting under the Policy have recognized that resellers or distributors using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

In view of the circumstances of the present case, the Panel accepts that the requirements of the Oki Data test have not been complied with by the registrants of the disputed domain names, be they the Respondents or any other persons or entities hiding behind their identities. All of the disputed domain names follow the same naming pattern incorporating the LA SPORTIVA trademark in combination with a geographic indication, and are confusingly similar to this trademark and nearly identical to the Complainant’s domain name <lasportiva.com>. They all resolve to similar websites that offer the Complainant’s products without providing any information about their owners and without containing any disclaimer for the lack of affiliation to the Complainant. As discussed in section 6.1 above, three of the disputed domain names were registered within a very short period of time, and the fourth one was registered after the filing of the Complaint, and it appears as more likely than not that all the disputed domain names are under common control.

Therefore, the Panel finds that the Respondents do not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The disputed domain names all incorporate the LA SPORTIVA trademark, which was registered many years prior to their registration, in combination with geographic terms. This makes them confusingly similar to the LA SPORTIVA trademark and nearly identical to the Complainant’s official domain name <lasportiva.com>, and Internet users may regard them as official online locations of the Complainant for the respective territories. As discussed in section 6.1, it is more likely than not that all disputed domain names are under common control, and they resolve to similar websites that offer the Complainant’s products without disclosing the lack of affiliation with the Complainant. The Complainant states that it has not authorized the registration and use of the disputed domain names, and none of the Respondents maintains the opposite or provides any plausible explanation for their registration and use. Three of the disputed domain names were registered in the period December 7-10, 2020, while the fourth one was registered after the Complainant filed its Complaint.

Taking the above into account, the Panel concludes that it is more likely than not that the Respondents have registered these disputed domain names acting in concert, with knowledge of the Complainant and targeting the LA SPORTIVA trademark in an attempt to attract traffic to the disputed domain names by confusing Internet users that they are reaching official online locations where the Complainant’s products are provided. Given their number, the identical naming pattern used for them, and their registration dates, the registration of the disputed domain names also appears as an attempt to “corner the market” in domain names that reflect the LA SPORTIVA trademark.

In view of the above, the Panel accepts that by registering and using the disputed domain names, their registrants, be they the Respondents or someone abusing their identities, have intentionally attempted to attract, for commercial gain, Internet users to the websites at the disputed domain names, by creating a likelihood of confusion with the Complainant and its LA SPORTIVA trademark, which supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain names have been registered and used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <lasportivaaustralia.com>, <lasportivaaustralias.com>, <lasportivanz.com>, and <lasportivauk.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: March 2, 2021

¹ The Respondent appears to have used the name of a third party when registering the disputed domain name <lasportivanz.com>. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the First Registrar regarding transfer of the disputed domain name <lasportivanz.com>, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the First Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.