WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

On AG, On Clouds GmbH v. Domain Admin, Whoisprotection.cc, Client Care, Web Commerce Communications Limited, Barbara Gaertner, Katja Sommer, Marina Abend, and Name Redacted

Case No. D2021-2861

1. The Parties

The Complainants are On AG, Switzerland, and On Clouds GmbH, Switzerland, represented by Rentsch & Partner, Switzerland.

The Respondents are Domain Admin, Whoisprotection.cc, Malaysia; Client Care, Web Commerce Communications Limited, Malaysia; Barbara Gaertner, Germany; Katja Sommer, Germany; Marina Abend, Germany; and Name Redacted.¹

2. The Domain Names and Registrars

The disputed domain names <onclouddamen.com>, <onrunningsoldes.com> and <onrunningsuisse.com> are registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

The disputed domain names <oncloudrunnersireland.com>, <oncloudtr.com>, <onrunninggreece.com>, <onrunning-ireland.com>, <onrunningnederland.com> and <onrunningschweiz.com> are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2021. On August 31, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On August 31, 2021, September 1, 2021 and September 2, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrants and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainants on September 17, 2021 providing the registrants and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on September 21, 2021.

The Center verified that the Complaint together with the amended Complaint 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 September 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2021. The Respondents did not submit any response. The Center received a third party’s communication by email on October 6, 2021. On October 22, 2021, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Taras Kyslyy as the sole panelist in this matter on October 31, 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 Complainants are providers of high end sports apparel and shoes, in particular running shoes, which can be bought at over 6,500 premium retail stores in over 50 countries or online through the Complainants’ online shop at “www.on-running.com”. In addition to its European headquarters in Zurich, Switzerland, the Complainants have offices in the United States of America, Canada, Japan, Australia, Germany, Brazil, China and Viet Nam. The Complainants’ products have won various international design and technology awards.

The Complainants have rights in a large number of trademarks containing the words ON, CLOUD, CLOUDS, RUN, and RUNNING including as follows:

- International Registration No. 1050016, trademark ON, registration date April 21, 2010;

- International Registration No. 1185372, trademark ON RUNNING, registration date October 25, 2013;

- International Registration No. 1361124, trademark CLOUD, registration date May 4, 2017;

- International Registration No. 1503051, trademark ON (fig.), registration date September 24, 2019; and

- International Registration No. 1258068, trademark RUN ON CLOUDS, registration date May 22, 2015.

The disputed domain names were registered as follows:

The disputed domain names formerly resolved to websites of similar design copied from the Complainants’ respective website, prominently featuring the Complainants’ trademarks and offering for sale the Complainants’ goods. At the time of this Decision, the disputed domain names resolve to inactive websites, except <onrunningsuisse.com>, <onrunningschweiz.com>, <cloudrunnersireland.store> and <onrunningireland.net> still resolve to websites offering for sale the Complainants’ goods.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainants’ trademarks. The disputed domain names reproduce the entirety of the Complainant’s respective trademarks and tradenames with the addition of the descriptive words or abbreviations. The applicable generic Top-Level Domain (“gTLD”) in the disputed domain names is viewed as a standard registration requirement and as such shall be disregarded under the first element confusing similarity test.

The Respondents have no rights or legitimate interests in the disputed domain names. The disputed domain names were registered very recently, whereas the trademarks of the Complainants are well-known and have long been protected.

The disputed domain names were registered and are being used in bad faith. The websites at the disputed the domain names are basically identical and are copies of the Complainants’ original online shop on the website “www.on-running.com”. The fake online shops contain the Complainants’ logo in the top left corner and reproduce product photos and descriptions that were copied from the original online shop of the Complainants. All of these photos are subject to the Complainants’ copyright. The fake online shops impersonate the Complainants by using their name and logo. There is no indication, that the fake online shops are not operated by the Complainants. The online shops do not have an imprint or an “about us” section. The “contact us” page contains solely a form without any further information. The fake online shops form part of a large number of fake online shops, operated under various domain names. The same fake online shops were already addressed in the previous UDRP cases with different domain names.²

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Preliminary Issues – Consolidation

The Complainants request the Panel hear the present dispute – brought by two Complainants against six Respondents (referred to herein collectively as “the Respondent”) – as a consolidated, “unitary” complaint. The Panel grants the request.

Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition.”

(I) Consolidation of Respondents

Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, as follows: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

The Complainants assert, that the Respondents should be treated as one respondent in this proceeding, as the Respondents appear to be the same person controlling connected websites with identical design. The Panel accepts this argument in favor of consolidation and grants the request to consolidate.

(II) Consolidation of Complainants

Section 4.11.1 of the WIPO Overview 3.0 summarizes the consensus view of UDRP panels on the consolidation of multiple complainants, in part, as follows:

“In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”

The Complainants appear to be related corporate entities and have a common legal interest sufficient to justify consolidation. There is no reason to require each of them to submit an almost identical complaint against the Respondents with nearly identical facts, legal arguments, and requested relief. Moreover, the Respondents will not suffer any prejudice, and consolidation will not affect the Respondent’s rights in responding to the Complaint.

The Panel accepts this in favor of the consolidation.

B. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview 3.0, the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain names incorporate the entirety of the respective Complainants’ trademarks.

According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. In the present case the Panel finds that the addition of terms “nederland”, “tr”, “damen”, “soldes”, “ireland”, “greece”, “australia”, “shoes”, “schweiz”, “suisse”, and a hyphen do not prevent a finding of confusing similarity of the disputed domain names to the Complainant’s trademarks.

Considering the above, the Panel finds the disputed domain names are confusingly similar to the Complainants’ trademarks, therefore, the Complainants have established their case under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainants have established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.

The Respondent is not commonly known by the disputed domain names (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainants did not license or otherwise agree for use of their prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).

According to section 2.8.1 of the WIPO Overview 3.0, resellers, distributors, or service providers using a domain name containing a complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods 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 such a UDRP case:

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

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

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

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

The Panel finds that the Respondent failed to satisfy at least the third above requirement and did not in any way disclose its actual relationship (or lack thereof) with the Complainants, and thus failed to pass the Oki Data Test. The Respondent’s use of the disputed domain names misleads consumers into thinking that the websites are operated by or affiliated with the Complainants. As such, the Respondent’s use of the disputed domain names cannot be considered bona fide.

The Respondent has no right or legitimate interests in the disputed domain names resolving to inactive websites at the time of the Decision (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).

Noting the risk of implied affiliation between the disputed domain names and the well-known trademarks of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain names could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897).

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names. Therefore, the Complainants have established their case under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Respondent’s use of the disputed domain names to purport to sell the Complainants’ products shows that at the time of the registration of the disputed domain names the Respondent clearly knew and targeted Complainants’ prior registered and famous trademark, which supports a finding of bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to paragraph 4(b)(iv) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “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”. In this case, the disputed domain names were resolving to websites featuring the Complainants’ trademarks and falsely pretended to be official Complainants’ websites to intentionally attract Internet users by creating a likelihood of confusion with the Complainants’ trademarks as to the source of the websites and its products. The Panel finds the above confirms the disputed domain names were registered and used in bad faith.

Although at the time of this decision the disputed domain names (except for <onrunningsuisse.com>, <onrunningschweiz.com>, <cloudrunnersireland.store> and <onrunningireland.net>) resolve to inactive webpages, the overall pattern of the disputed domain names registration and use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain names implausible. Thus, the current passive holding of some of the disputed domain names does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman), WIPO Case No. DPW2017-0003).

Considering the above, the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainants have established their case under paragraph 4(a)(iii) of the Policy.

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, <onclouddamen.com>, <oncloudrunnersireland.com>, <oncloudshoesaustralia.com>, <oncloudtr.com>, <onrunninggreece.com>, <onrunning-ireland.com>, <onrunningnederland.com>, <onrunningschweiz.com>, <onrunningsoldes.com>, and <onrunningsuisse.com>, be transferred to the Complainants.

Taras Kyslyy
Sole Panelist
Date: November 12, 2021

¹ The registrant of the disputed domain name <oncloudshoesaustralia.com> appears to have used the name of a third party when registering the disputed domain name <oncloudshoesaustralia.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 Registrar regarding transfer of the disputed domain name <oncloudshoesaustralia.com>, which includes the name provided for the registration of the disputed domain name <oncloudshoesaustralia.com>. The Panel has authorized the Center to transmit Annex 1 to the 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.