WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
On AG, On Clouds GmbH v. Domain Administrator, See PrivacyGuardian.org / Client Care, Web Commerce Communications Limited, Domain Admin, Whoisprotection.cc, Susanne Hobbs, Patrick Eiffel, Jennifer Gruenewald, Nadine Hueber, Marcel Beike
Case No. D2021-3912
1. The Parties
The Complainants are On AG and On Clouds GmbH, Switzerland, represented by Rentsch Partner AG, Switzerland.
The Respondents are Domain Administrator, See PrivacyGuardian.org, United States of America / Client Care, Web Commerce Communications Limited, Malaysia, Domain Admin, Whoisprotection.cc, Malaysia, Susanne Hobbs, Germany, Patrick Eiffel, Germany, Jennifer Gruenewald, Germany, Nadine Hueber, Germany, and Marcel Beike, Germany.
2. The Domain Names and Registrar
The disputed domain names <oncloud-australia.com>, <oncloudnederland.com>, <oncloud-romania.com>, <on-lobesko.com>, and <onrunningbelgie.com> are registered with Alibaba.com Singapore E-Commerce Private Limited (the “first Registrar”).
The disputed domain names <oncloud-malaysia.com>, <onrunnersau.com>, <onrunnersromania.com>, <onrunnersuk.com>, and <onrunnersverige.com> are registered with NameSilo, LLC (the “second Registrar”).
Together, the disputed domain names are referred to in this decision as the “Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2021. On November 23, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Domain Names registered with them. On November 23, 2021, the second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for those of the Domain Names registered with the second Registrar which differed from the named respondent and contact information in the Complaint. On November 25, 2021, the first Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for those of the Domain Names registered with the first Registrar which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2021, providing the registrant and contact information disclosed by the Registrars, inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on November 29, 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 6, 2021. In accordance with the Rules, paragraph 5, the due date for Responses was December 26, 2021. The Respondents did not submit any Responses. Accordingly, the Center notified the Respondents’ defaults on December 29, 2021.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 10, 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.
The invitation to the Complainants to file an amended Complaint stemmed from the fact that the registrant details of the Domain Names were either not available in the public WhoIs at the time of the submission of the Complaint or showed a privacy service, Domain Administrator, See PrivacyGuardian.org. In response to the Center’s registrar verification requests, the Registrars disclosed the names and addresses of the entities in whose names the Domain Names are currently registered. The amended Complaint names the underlying registrants as the Respondents. For the purposes of this decision, the Panel treats the underlying registrants, Client Care, Web Commerce Communications Limited, Domain Admin, Whoisprotection.cc, Susanne Hobbs, Patrick Eiffel, Jennifer Gruenewald, Nadine Hueber, and Marcel Beike, as the Respondents.
The amended Complaint incorporates a request from the Complainants that the issues raised in this Complaint be consolidated and dealt with at the same time notwithstanding that there are two Complainants and multiple Respondents. The matter is dealt with in detail at section 6A below, but here it is sufficient to state that the Panel has acceded to the requests for consolidation. In the case of the multiple Respondents the Panel is satisfied the websites to which the Domain Names are connected are under common control. Henceforth the term “Respondent” is used to refer to the entity having control over those websites.
4. Factual Background
The Complainants are related corporate entities with headquarters in Switzerland. They are engaged in the production and sale of sports apparel and shoes, particularly running shoes. They market their products under and by reference to a number of trade marks, which are the subject of trade mark registrations held in their name. For present purposes it is sufficient to mention four of the registrations all of which cover inter alia running shoes in class 25, namely:
- International trade mark registration No. 1050016, ON (word), registered on April 21, 2010;
- International trade mark registration No. 1185372, ON RUNNING (words), registered on October 25, 2013;
- International trade mark registration No. 1361124, CLOUD (word), registered on May 14, 2017; and
- International trade mark registration No. 1503051, ON (figurative mark), registered on September 24, 2019.
The Complainants operate their official website at “www.on-running.com”.
The Domain Names were registered in different names on various dates between April 22, 2021 and July 22, 2021 as follows:
- <oncloud-australia.com>, registered in the name of Domain Admin, Whoisprotection.cc on April 22, 2021;
- <oncloudnederland.com>, registered in the name of Client Care, Web Commerce Communications Limited on July 5, 2021;
- <oncloud-romania.com>, registered in the name of Client Care, Web Commerce Communications Limited on July 6, 2021;
- <on-lobesko.com>, registered in the name of Domain Admin, Whoisprotection.cc on April 27, 2021;
- <onrunningbelgie.com>, registered in the name of Client Care, Web Commerce Communications Limited on July 22, 2021;
- <oncloud-malaysia.com>, registered in the name of Susanne Hobbs on July 3, 2021;
- <onrunnersau.com>, registered in the name of Jennifer Gruenewald on June 19, 2021;
- <onrunnersromania.com>, registered in the name of Nadine Hueber on June 19, 2021;
- <onrunnersuk.com>, registered in the name of Marcel Beike on June 21, 2021; and
- <onrunnersverige.com>, registered in the name of Patrick Eiffel on July 5, 2021.
At the date of the Complaint all the Domain Names connected to a website (or websites) replicating the look and feel of the Complainants’ official website. They featured images of the Complainants’ running shoes and made prominent use of the Complainants’ ON figurative mark covered by International trade mark registration No. 1503051 mentioned above. Each of the websites connected to the Domain Names featured a copyright notice in the form mutatis mutandis “Copyright © 2022 oncloudnederland Powered by oncloudnederland.com”. In each case the name of the purported copyright owner matched the Domain Name in question.
The Panel has attempted to access the Respondent’s websites, but was warned off in respect of one of them (<onrunnersromania.com>) by a web browser message stating that the website was unsafe, and received error messages in respect of four others (<oncloud-australia.com>, <onrunnersau.com>, <onrunningbelgie.com>, and <on-lobesko.com>) denying access.
5. Parties’ Contentions
The Complainants contend that the Domain Names are confusingly similar to trade marks in which the Complainants have rights; that the Respondent has no rights in respect of the Domain Names; and that the Domain Names have been registered and are being used in bad faith.
In essence the Complainants are contending that the Respondent has control over all the websites connected to the Domain Names and registered the Domain Names for the purpose for which the Respondent is using them, namely to impersonate the Complainants.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Preliminary Issues
Section 4.11.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides as follows:
“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP 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.
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 are related corporate entities and, in the view of the Panel, have a specific common grievance against the Respondent in that the Respondent’s conduct has adversely affected the Complainants in identical fashion. The Panel finds that it would be equitable and procedurally efficient to permit the consolidation, thereby enabling the Complainants’ complaints to be dealt with as one in this administrative proceeding.
The Domain Names are held in several different names. Although they were not all registered in the name of the same domain name holder the Panel notes that registrant details appear to relate to either holding accounts with an unknown underlying registrant or named individuals likely to be fake, not truly corresponding to any such person. However, as explained in 4.11.2 of WIPO Overview 3.0 consolidation of complaints in respect of disputed domain names held in different names may be permitted where “(i) the domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all parties”.
The Panel is satisfied on the balance of probabilities and in the absence of any challenge from the Respondent that the Domain Names and their corresponding website(s) are indeed under common control. The websites to which the Domain Names were connected at the time of the Complaint were substantially identical in form and content. The Panel cannot conceive of any basis upon which it could be said that consolidation would unfairly disadvantage the Respondent in any way. The Panel is satisfied that consolidation would be fair and equitable to all parties and accedes to the Complainants’ request.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainants must prove each of the following, namely that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
C. Identical or Confusingly Similar
The Domain Names all feature at their forefront the ON primary trade mark of the Complainants followed by descriptive and/or geographical terms and ending with “.com” generic Top Level Domain (“gTLD”).
Section 1.7 of WIPO Overview 3.0 explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainants’ ON registered trade mark is readily recognizable in its entirety in all the Domain Names. The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights.
With that finding, the Complaint succeeds under the first element (paragraph 4(a)(i) of the Policy) and it is unnecessary for the Panel to address other contentions as to confusing similarity put forward by the Complainants based on the Complainants’ ON RUNNING and CLOUD registered trade marks.
D. Rights or Legitimate Interests
This, the second element of the Policy (paragraph 4(a)(ii)), essentially calls for a complainant to prove a negative, which is far from easy where the relevant information as to the respondent’s rights or legitimate interests is often primarily within the knowledge of the respondent. The matter is addressed in section 2.1 of WIPO Overview 3.0 as follows:
“While the overall burden of proof in UDRP proceedings is on the complainant, 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.”
This is not such a case. The Complainants’ case is made out plainly in the screenshots of the Respondent’s websites annexed to the Complaint. As contended for by the Complainants, the Respondent’s websites follow the look and feel of the Complainants’ website, feature images taken from the Complainants’ website, and contain nothing to indicate that those websites are not websites of the Complainants. The only indication provided as to the owner and operator of each website is the copyright notice, which, as can be seen from section 4 above, does nothing to negate the impression that the websites are websites of the Complainants.
The Panel is satisfied that the Respondent registered the Domain Names for the purpose for which the Respondent is using them, namely to impersonate the Complainants. On no basis can such a use give rise to rights or legitimate interests in respect of the Domain Names in the hands of the Respondent.
E. Registered and Used in Bad Faith
In the present circumstances, it is clear the Respondent knew of and specifically targeted the Complainant’s trade marks when registering the Domain Names. Given that the Domain Names are connected to what appear to be online shops, the likelihood is that the Respondent’s purpose is to derive commercial gain from sales through the shops to Internet users erroneously believing that they are purchasing from the Complainants or authorised representatives of the Complainants. Another possibility is that the Respondent is using the websites to gather personal information from unwitting Internet users. Either way, it is clear that the Domain Names have been registered and are being used in bad faith.
In support of their contentions under this element of the Policy the Complainants have drawn the Panel’s attention to four previous cases brought by the Complainants under the Policy, namely:
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.
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.
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, WIPO Case No. D2021-2861.
All four cases feature multiple registrants and multiple domain names similar in form to the Domain Names and similarly used to connect to online shops of apparently similar appearance to that of the Complainants’ website. In all of these cases consolidation was requested and allowed. In three of them the at least one of the named respondents has a name similar to part of the named Respondent in this case. The Complainants assert that the online shops in these cases are the same shops as those to which the Domain Names are or were connected. This may very well be the case, but the Panel has not been shown screenshots of the websites in question and has not felt it necessary to take these cases into account in coming to this decision.
Accordingly, the Complaint succeeds under the third element (paragraph 4(a)(iii) of the Policy).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <oncloud-australia.com>, <oncloudnederland.com>, <oncloud-romania.com>, <on-lobesko.com>, <onrunningbelgie.com>, <oncloud-malaysia.com>, <onrunnersau.com>, <onrunnersromania.com>, <onrunnersuk.com>, and <onrunnersverige.com>, be transferred to the Complainants.
Date: January 20, 2022