WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

On AG, On Clouds GmbH v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Ben Williams

Case No. D2021-3632

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Ben Williams, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <buycloud1shoes.com>, <cloudoneshoes.com>, <mycloudoneshoes.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 15, 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 Respondent of the Complaint, and the proceedings commenced on November 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2021. On November 19, 2021, the Respondent sent an email communication to the Center, but did not submit a formal Response. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on December 16, 2021.

The Center appointed Assen Alexiev as the sole panelist in this matter on January 12, 2022. 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 sports apparel and shoes, in particular running shoes, offered for sale at over 6,500 retail stores in over 50 countries or online through the Complainants’ online shop at “www.on‑running.com”. The Complainants have offices in Switzerland, the United States, Canada, Japan, Australia, Germany, Brazil, China, and Vietnam. The Complainants are the “Official Partner” of the Swiss Olympic team.

The Complainant On Clouds GmbH is the owner of the International trademark CLOUD with registration No. 1361124, registered on May 4, 2017 for goods in International Classes 25 and 28 (the “CLOUD trademark”).

The disputed domain name <buycloud1shoes.com> was registered on March 30, 2020. The disputed domain name <cloudoneshoes.com> was registered on March 14, 2019. The disputed domain name <mycloudoneshoes.com> was registered on July 19, 2019. The Complainants provided evidence that the disputed domain names were previously used in connection to a web shop appearing to offer shoes for sale, currently they do not resolve to active webpages.

5. Parties’ Contentions

A. Complainant

According to the Complainants, the Respondent operated a web shop under the disputed domain name <bycloud1shoes.com>. The other two disputed domain names <mycloudoneshoes.com> and <cloudoneshoes.com> were being used for support email addresses in connection with the Respondent’s web shop according to the information on the “Contact us” page.

The Complainants state that the disputed domain names are confusingly similar to their CLOUD trademark, because they incorporate it, and the combination of the terms “cloud1” and “cloudone” with “shoes” evokes associations with the Complainants’ shoes and the CLOUD trademark. The addition of the number “1” or “one” to the term “cloud” does not change the overall impression of the sign so as to exclude the association with the Complainants’ products, and the terms “my”, “buy”, and “shoes” are dictionary words that do not distinguish the disputed domain names from the Complainants’ trademark.

According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain names, because they were registered recently, whereas the Complainant’s CLOUD trademark is well-known and has long been protected.

The Complainants contend that the disputed domain names were registered and are being used in bad faith. They note that the Respondent operates a web shop under the disputed domain name <bycloud1shoes.com>, and the other two disputed domain are being used for support email addresses in connection with the Respondent’s web shop according to the information on the “Contact us” page, which does not provide the name of the person or company who operates the website. The Complainants further point out that the Respondent’s web shop only offers one shoe model in two colors which is not branded as “CLOUD1” or “CLOUDONE”, but as “UBFEN”. According to the Complainants, this is a generic brand for footwear produced in China, and shoes under it can be found on various marketplaces. The Complainants conclude that the disputed domain names are primarily used to exploit the Complainants’ CLOUD trademark by attracting potential buyers who are actually looking for the Complainants’ products.

B. Respondent

The Respondent did not submit a formal Response in reply to the Complainant’s contentions. In its informal communication to the Center, it stated the following:

“Hello,

Thanks for bringing my attention to this matter, as this is the first time I have heard of this issue. After looking at the complaint, I do not believe I knowingly or unknowingly violated any trademarks or patents with ‘On Clouds GmbH’ but do want to resolve this issue with you immediately. To help remedy the situation I have ceased all activity and removed all content related to the 3 domains in question:

buycloud1shoes.com
mycloudoneshoes.com
cloudoneshoes.com

I believe this has satisfied any and all issues you have and this should suffice the needs you are seeking. You can now consider this case closed.

Thank you.”

6. Discussion and Findings

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) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the disputed domain names have been registered and are being used in bad faith.

By the Rules, paragraph 5(c)(i), it is expected that a response should: “[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 […].”

A. Identical or Confusingly Similar

The Complainants have submitted evidence that the Complainant On Clouds GmbH is the owner of the CLOUD trademark. In view of this, the Panel accepts that the Complainants have established rights in the CLOUD 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”) 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain names.

The relevant elements of the disputed domain names are “buycloud1shoes”, “cloudoneshoes”, and “mycloudoneshoes” respectively. Each of them incorporates the CLOUD trademark together with dictionary words such as “buy”, “shoes”, “my”, and “one”, or the number “1”. The CLOUD trademark is easily recognizable in each of the disputed domain names. 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.

Taking the above into account, the Panel finds that the disputed domain names are confusingly similar to the CLOUD 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 Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain names, because the disputed domain names were registered only recently, while the Complainants’ CLOUD trademark is well-known and has long been protected. The Complainants point out that the Respondent operates a web shop at one of the disputed domain names, without specifying the name of the person or company who operates the website, and this web shop offers one shoe model branded with a generic brand for footwear produced in China. The Complainants conclude that the disputed domain names are primarily used to exploit the Complainants’ CLOUD trademark by attracting potential buyers who are actually looking for the Complainants’ products. The Complainants have thus established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent has not submitted a formal Response and in its informal communication to the Center it has not denied the statements included in the Complaint or disputed the evidence attached to it. The Respondent has not provided any specific arguments in support of the existence of any rights or legitimate interests in the disputed domain names.

As discussed in section 6.A above, the disputed domain names incorporate the CLOUD trademark in combination with dictionary words, and the evidence in the case file shows that one of them has been used in connection with a web shop offering generic branded footwear for sale in competition with the Complainant, the second has redirected to the same web shop, while the third one is likely to have been for electronic mail addresses provided on the website of the same web shop.

In view of the above, the Panel concludes that it is more likely than not that the Respondent has targeted the CLOUD trademark with the registration of the disputed domain names in an attempt to improperly capitalize on the reputation and goodwill associated with this trademark by confusing and attracting to the disputed domain names Internet users looking for the Complainant’s products and offering them competitive products. This conduct does not appear as legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain names.

Therefore, the Panel finds that the Respondent does not have rights and 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.”

As discussed in the previous sections, the disputed domain names incorporate the CLOUD trademark, and the evidence in the case file shows that the website at one of the disputed domain names has offered for sale generic-branded footwear without specifying the name of the person operating the website and the lack of relationship with the Complainants. The evidence submitted by the Complainants supports their statement that one of the other two disputed domain names redirects to the same web shop, while the third one is likely to have been used for the operation of electronic mail addresses used in connection with the Respondent’s web shop, thus increasing the likelihood of confusion in Internet users as to the affiliation of this web shop with the Complainants.

In view of the above, the Panel concludes that the Respondent must have been aware of the goodwill of the Complainant’s CLOUD trademark when it registered the disputed domain names, and that it is more likely that the Respondent registered and used them in an intentional attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s CLOUD trademark as to the affiliation of the Respondent’s website and of the origin of the products offered for sale on the Respondent’s website.

In view of all the above, the Panel finds that the disputed domain names have been registered and are being 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, <buycloud1shoes.com>, <cloudoneshoes.com>, and <mycloudoneshoes.com>, be transferred to the Complainants.

Assen Alexiev
Sole Panelist
Date: January 26, 2022