WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

On AG and On Clouds GmbH v. Domain Administrator, See PrivacyGuardian.org, Super Privacy Service LTD c/o Dynadot / Markus Kunze, Jan Baer, Bridget Wilhelm, Domain Admin, Whoisprotection.cc, Client Care, Web Commerce Communications Limited

Case No. D2021-3784

1. The Parties

The Complainants are On AG (“First Complainant”) and On Clouds GmbH (“Second Complainant”), Switzerland, represented by Rentsch Partner AG, Switzerland.

The Respondents are Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”), Super Privacy Service LTD c/o Dynadot, United States / Markus Kunze, Germany, Jan Baer, Germany, Bridget Wilhelm, United States, Domain Admin, Whoisprotection.cc, Malaysia, and Client Care, Web Commerce Communications Limited, Malaysia.

2. The Domain Names and Registrars

The disputed domain names <oncloudmalaysia.com>, <onrunning-canada.com>, <onrunningpolska.com>, <onrunningturkey.com>, <onrunningusa.com>, <tenisoncloud.com>, <tenisoncloudmexico.com> are registered with Alibaba.com Singapore E-Commerce Private Limited (the “First Registrar”).

The disputed domain names <onrunnerfrance.com> and <onrunnerosterreich.com> are registered with NameSilo, LLC (the “Second Registrar”).

The disputed domain name <onshoescloudx.com> is registered with Dynadot, LLC (the “Third Registrar”).

Collectively, the disputed domain names will be referred to as the “Disputed Domain Names” below.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2021. On November 12, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Disputed Domain Names. On November 12, 2021, the Second 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 Respondents and contact information in the Complaint. On November 15, 2021, the First and Third Registrars transmitted by email to the Center their verification responses 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 Complainants on November 16, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on November 17, 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 December 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 22, 2021.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on January 3, 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 high end sports apparel and shoes, in particular running shoes, commercialized at over 6,500 premium retail stores in over 50 countries and 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, Canada, Japan, Australia, Germany, Brazil, China, and Viet Nam. The Complainants’ products have won various design and technology awards, and have attracted the investment and/or endorsement of a number of well-known sports personalities.

The Complainants operate under various brands including ON, ON RUNNING, RUN ON CLOUDS, CLOUD, CLOUD X, and CLOUDRUSH, as well as other trademarks containing the words “on”, “cloud”, and/or “run”. The Second Complainant has secured trademark registrations for these brands in many jurisdictions, which include the following registrations:

- International Registration No. 1050016, ON, registered on April 21, 2010, in classes 25 and 28;

- International Registration No. 1503051, ON (figurative), registered on September 24, 2019 in classes 9, 18, 24, 25, and 28;

- International Registration No. 1185372, ON RUNNING, registered on October 25, 2013, in classes 25, and 28;

- International Registration No. 1361124, CLOUD, registered on May 4, 2017, in classes 25, and 28;

- International Registration No. 1258068, RUN ON CLOUDS, registered on May 22, 2015, in classes 25, 28, and 42;

- International Registration No. 1369343, CLOUD X, registered on August 21, 2017, in classes 25, 28, and 42; and

- United States Trademark Registration No. 79208154, CLOUDRUSH, registered on January 2, 2018, in classes 25, 28, and 42.

The Complainants further own various domain names comprising its trademarks, including <on-running.com> (registered on September 16, 2009), which is linked to its corporate website and online shop.

The Disputed Domain Names were registered within a period of approximately six months (between April 22, 2021 and September 2, 2021), as follows:

- <onrunningusa.com> (“Disputed Domain Name No. 1”), was registered on April 22, 202;

- <onshoescloudx.com> (“Disputed Domain Name No. 2”), was registered on April 27, 2021;

- <onrunningturkey.com> (“Disputed Domain Name No. 3”), was registered on April 22, 2021;

- <onrunningpolska.com> (“Disputed Domain Name No. 4”), was registered on April 22, 2021;

- <oncloudmalaysia.com> (“Disputed Domain Name No. 5”), was registered on June 21, 2021;

- <tenisoncloud.com> (“Disputed Domain Name No. 6”), was registered on April 25, 2021;

- <tenisoncloudmexico.com> (“Disputed Domain Name No. 7”), was registered on August 26, 2021;

- <onrunnerfrance.com> (“Disputed Domain Name No. 8”), was registered on July 6, 2021;

- <onrunnerosterreich.com> (“Disputed Domain Name No. 9”), was registered on July 6, 2021; and

- <onrunning-canada.com> (“Disputed Domain Name No. 10”), was registered on September 2, 2021.

According to the evidence provided by the Complainant, the Disputed Domain Names formerly resolved to websites of similar design copied from the Complainants’ respective website, prominently featuring the Complainants’ trademarks and purportedly offering for sale the Complainants’ goods.

At the time of this Decision, the Disputed Domain Names resolve to inactive or blocked websites, except the Disputed Domain Names Nos. 8 and 10, which still resolve to websites offering for sale the Complainants’ goods. The Disputed Domain Names Nos. 8 and 10 resolve to similar active websites, in French and English, respectively, which display the Complainants’ logo (the ON figurative mark) in their respective headings as well as in their browser tabs, and commercialize sport shoes bearing the Complainants’ trademarks. The layout, style, and content of these websites very closely follows that of the Complainants’ website, and the products advertised for sale on these sites each feature the Complainants’ logo and are described in the accompanying text as the Complainants’ shoes. The prices of the sport shoes offered for sale in these websites range from EUR 65 to 90, or GBP 67 to 97, respectively. These websites do not include any information or contact details about their respective owners or the owner of the Disputed Domain Names Nos. 8 and 10, and their “contact us” sections consist solely of a contact form.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The Disputed Domain Names are confusingly similar to the Complainants’ trademarks. The Disputed Domain Names reproduce the entirety of the Complainant’s trademarks with the addition of geographical terms (“usa”, “turkey”, “polska”, “malaysia”, “mexico”, “france”, “canada”, or “osterreich”, which is false spelling for “Österreich” or “Oesterreich”), or descriptive terms (“shoes”, or “tenis”, which means “tennis” in Spanish), or use a variation of the mark ON RUNNING (reproduced in a similar version as “onrunner”). 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 Complainants’ trademarks 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”. These fake online shops contain the Complainants’ logo and reproduce product photos and descriptions copied from the original online shop of the Complainants. All of these photos are subject to the Complainants’ copyright. These fake online shops impersonate the Complainants by using their name and logo, including no indication that they are not operated by the Complainants. These online shops do not have an imprint or an “about us” section, and their “contact us” page contains solely a form without any further information. These 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 previous UDRP cases for different domain names.¹

The Complainants request the transfer of the Disputed Domain Names.

B. Respondent

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

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material, and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Consolidation: Multiple Complainants

The Complaint and the amended Complaint were both filed by two complainants. The First Complainant is part of the same corporate group as the Second Complainant, which owns the trademark registrations set out in Section 4 above.

The Panel finds that the Complainants have a common grievance against the Respondents and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

B. Consolidation: Multiple Domain Name Registrants

Although the Disputed Domain Names are registered by nominally different registrants, the Complainant alleges that they are under common control and requests consolidation of the disputes against their respective registrants pursuant to paragraph 10(e) of the Rules. The Respondents did not comment on the Complainant’s consolidation request.

The Panel notes that the circumstances of this case indicate that the Disputed Domain Names are under a common control, inter alia: (i) the Disputed Domain Names were all registered within a relatively short period of approximately six months (between April 22, 2021 and September 2, 2021); (ii) all the Disputed Domain Names incorporate one or more of the Complainant’s trademarks, following a similar pattern; (iii) the websites that were (or still are) associated with all the Disputed Domain Names prominently display the Complainant’s ON logo and include this logo in their browser tab, and follow a very similar layout, reproducing the look and feel, the original photos, and product descriptions included in the Complainant’s online shop; (iv) seven of the Disputed Domain Names were registered with the same Registrar (the First Registrar), two were registered with the Second Registrar, and one was registered with the Third Registrar; and (v) the underlying registrant details appear likely to be fake or using the identities of third parties without authorization, or corresponding to holding accounts where the underlying registrant is unknown.

In these circumstances, the Panel considers that the Disputed Domain Names are under common control, being the consolidation procedurally efficient, as well as fair and equitable to the Parties. See section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, the Panel grants the Complainant’s request for consolidation of the disputes against the nominally different registrants (referred to below as “the Respondent”) in a single proceeding.

C. Identical or Confusingly Similar

The Complainant indisputably has rights in the ON, ON RUNNING, RUN ON CLOUDS, CLOUD, CLOUD X, and CLOUDRUSH marks, both by virtue of its trademark registrations and its use of these marks in the market.

All the Disputed Domain Names incorporate the ON mark in its entirety, as well as other of the above mentioned Complainant’s trademarks, adding geographical terms (“usa”, “turkey”, “polska”, “malaysia”, “mexico”, “france”, “canada”), a misspelling of a geographical term (“osterreich”, which is false spelling for “Österreich” or “Oesterreich”), a descriptive term (“shoes”), a translation of a descriptive term ( “tenis”, which means “tennis” in Spanish), or using variation of one of the Complainant’s trademarks (the ON RUNNING mark is reproduced as “onrunner” in the Disputed Domain Names Nos. 8 and 9), and, in one of the Disputed Domain Names (Disputed Domain Name No. 10), including a hyphen to separate its terms. The Complainant’s trademarks are recognizable in each of the Disputed Domain Names, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11 of the WIPO Overview 3.0. Moreover, the content of the websites at the Disputed Domain Names affirms a finding of confusing similarity here. See section 1.15 of the WIPO Overview 3.0.

Accordingly, this Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademarks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, 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 primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in a disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.

The Complainant’s above-noted assertions and evidence in this case effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the Disputed Domain Names, providing the circumstances of paragraph 4(c) of the Policy, without limitation, in order to rebut the Complainant’s prima facie case. The Respondent, however, has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the Disputed Domain Names.

A core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademarks. See section 2.5, WIPO Overview 3.0. The Disputed Domain Names incorporate the Complainant’s ON trademarks, and in some cases other of Complainants’ trademarks, in their entirety, adding descriptive terms that refer to the same sector of the Complainant’s sport goods (like “tenis” or “shoes”) or geographical terms that may refer to the locations or addressed markets of the Complainant’s online shops. The Panel considers that these alterations do not avoid the implied affiliation (and risk of confusion) with the Complainant’s business and its trademarks, giving the impression that the Disputed Domain Names are referred to official or authorized online shops for the Complainant’s goods.

The Panel notes that, according to the evidence provided by the Complainant, the Disputed Domain Names have been used, and two of them are still used (Disputed Domain Names Nos. 8 and 10), in connection to websites that prominently displayed the Complainant’s ON logo, included this logo in their browser tabs, and displayed official photographs and other copyrighted promotional materials. These websites offered for sale what purported to be the Complainant’s sport shoes. It is clear from the Complaint that the Complainant has not licensed or otherwise authorized the Respondent to use its trademarks and official copyrighted promotional material, and there exists no relationship between the Parties. Whether or not the shoes offered in these websites are genuine or counterfeit, these sites gave the false impression that they were operated or endorsed by, or affiliated with, the Complainant. No information about the owner of these sites or their respective Disputed Domain Names and no disclaimer appeared on these sites to clarify that the Respondent and its websites has no relationship to the Complainant.

In this respect, the Panel finds that the Respondent’s websites intended to confuse Internet users into believing that they were (or are) owned and operated by the Complainant, and such use does not comprise a bona fide offering of goods and services.

Additionally, the Panel, under its general powers articulated, inter alia, in paragraph 10 of the Rules, has consulted the Complainant’s official online shop to compare the prices of its genuine products with those of the shoes offered in the websites that were (or still are in two cases) linked to the Disputed Domain Names. The Panel notes that the prices of the sport shoes offered in the Respondent’s websites are approximately half of the prices of the original Complainant’s sport shoes, which, in the Panels view, indicates that they may not be genuine.

The use of a domain name for illegal activity (e.g., the sale of counterfeit goods, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See section 2.13 of the WIPO Overview 3.0.

It is further remarkable that the Respondent has chosen not to reply to the Complaint, not providing any information or evidence in connection to its business or to any possible rights or legitimate interests in the Disputed Domain Names. Its reaction to this proceeding has apparently been to take down most of the websites that were linked to the Disputed Domain Names.

The Panel further notes there is no evidence that suggests that the Respondent is commonly known by the Disputed Domain Names within the meaning of paragraph 4(c)(ii) of the Policy. In this respect, the Panel notes that the Respondent is identified by the Registrar’s verifications as various underlying registrants, none of which is known by any of the Disputed Domain Names.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the Disputed Domain Names. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the Disputed Domain Names have been registered and are being used in bad faith.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the Disputed Domain Names.

The Disputed Domain Names were registered in 2021, after the registration of the Complainant’s trademarks. All the disputed domain names wholly incorporate the ON trademark and other of the Complainant’s trademarks, following a similar pattern. The Disputed Domain Names Nos. 2, 6, and 7 include descriptive terms (“shoes” and “tenis”) related to the Complainant’s products. The websites that were (or still are in two cases) linked to the Disputed Domain Names reproduce the look and feel of the Complainant’s official online shop, displaying the Complainant’s ON logo in a prominent position an in their browser tabs, including, with no authorization, official promotional material, and purportedly offering for sale the Complainant’s products.

Given these circumstances, the Panel finds that the Respondent knew of the Complainant and its trademarks at the time that it registered the Disputed Domain Names, targeting the ON, ON RUNNING, CLOUD, and CLOUD X marks in bad faith when it registered and used the Disputed Domain Names. The Panel considers that the Disputed Domain Names were intended to attract Internet users by creating a likelihood of confusion with the Complainant’s official online store and its trademarks, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a product or service on those websites within the terms of paragraph 4(b)(iv) of the Policy.

The Panel notes that the current non-use of most of the Disputed Domain Names does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0. This circumstance, in fact, corroborates the Respondent’s bad faith.

Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Disputed Domain Names have been registered and are being used in bad faith 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 <oncloudmalaysia.com>, <onrunning-canada.com>, <onrunningpolska.com>, <onrunningturkey.com>, <onrunningusa.com>, <tenisoncloud.com>, <tenisoncloudmexico.com>, <onrunnerfrance.com>, <onrunnerosterreich.com>, and <onshoescloudx.com> be transferred to the Complainants.

Reyes Campello Estebaranz
Sole Panelist
Date: January 17, 2022

¹ See On AG and On Clouds GmbH, c/o On AG v. Stefan Neumann, Patrick Kalb, Lukas Ziegler, Katja Eberhardt; Mathias Hartman / Domain Administrator; Bettina Presser / Domain Admin, Privacy Protect LLC; Johanna Koehler / Domain Administrator; Mitja Schmidt / Domain Administrator; Helle Mynster / Domain Administrator; Tonnis Wolthuis / Domain Administrator, WIPO Case No. D2020‑2943; On AG and On Clouds GmbH v. Domain Admin, Whoisprotection.cc / Kerstin Frankfurter / Name Redacted / Name Redacted / Name Redacted / Casey Williams / Name Redacted, WIPO Case No. D2021-0925; and On AG, On Clouds GmbH v. Web Commerce Communications Limited, Domain Admin, Whoisprotection.cc / Christin Schmidt, Sandra Naumann, Jana Papst, WIPO Case No. D2021-2263.