WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
On AG and On Clouds GmbH v. Domain Administrator, See PrivacyGuardian.org/ Mike Kalb, Tobias Bader, Sandra Wurfel, Kristian Mauer, Mathias Schultheiss, Lauren Duirs; Domain Admin, Whoisprotection.cc/ Leah Hahn; Web Commerce Communications Limited, Client Care and Whoisprotection.cc, Domain Admin
Case No. D2021-4340
1. The Parties
Complainant is On AG and On Clouds GmbH, Switzerland, (collectively hereinafter referred to as “Complainants”) represented by Rentsch & Partner, Switzerland.
Respondents are Domain Administrator, See PrivacyGuardian.org, United States of America (“USA”)/ Mike Kalb, Tobias Bader, Sandra Wurfel, Kristian Mauer, Mathias Schultheiss, all from Germany; Domain Administrator, See PrivacyGuardian.org, United States of America/Lauren Duirs, New Zealand; Domain Admin, Whoisprotection.cc, Malaysia/ Leah Hahn, Germany; Web Commerce Communications Limited, Client Care, Malaysia and Whoisprotection.cc, Domain Admin, Malaysia.
2. The Domain Name and Registrar
The disputed domain names <cloudrusheshop.com>, <oncloudblackfriday.com>, <oncloudbrasil.com>, <oncloudsingapore.com>, <oncloud-skor.com>, <oncloudtrainerssaleuk.com>, <onrunnerireland.com>, <onrunnernederland.com>, <onrunnersportugal.com>, <onrunnerturkiye.com>, <onrunnerza.com>, <onrunningindia.com>, <onrunning-nederland.com>, <onrunningsaleuk.com>, <onrunningscarpe.com>, <onrunning-shoes-australia.com> (the above-listed domain names will be collectively hereinafter referred to as the “Domain Names”) are registered with Alibaba.com Singapore E-Commerce Private Limited, Dynadot, LLC, Web Commerce Communications Limited dba WebNic.cc and NameSilo, LLC (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2021. On December 22, 2021, the Center transmitted by email to the Registrars several requests for registrar verifications in connection with the Domain Names. Between December 22 and December 24, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on December 27, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amended Complaint and consolidation arguments regarding Respondents. Complainant filed an amended Complaint and a consolidation request on December 30, 2021, to which the Center acknowledged receipt.
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 Respondents of the Complaint, and the proceedings commenced on January 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2022. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on January 26, 2022.
The Center appointed Marina Perraki as the sole panelist in this matter on February 2, 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.
Consolidation of Respondents
The Panel has considered the possible consolidation of the Complaint for the Domain Names at issue. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “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 Complaint concerns sixteen Domain Names. The Panel notes the following features of the Domain Names and arguments submitted by Complainant in favor of the consolidation of all the above Domain Names:
- all Domain Names lead, at the time of filing of the Complaint, to identical websites in various languages (the Websites);
- the Domain Names contain trademarks of Complainants along with words in various languages, namely they share a common structure;
- they were all registered within a few months or days difference in the same year 2021, namely between April, 2021,and November, 2021, some also on the same day, e.g. July 6, 2021 or June 21, 2021; and
- eight Domain Names share the same registrant country and city, namely Kuala Lumpur and Malaysia, one shares the same registrant country, namely Malaysia, one is registered with a privacy service in Malaysia, Whoisprotection.cc and other five share the same privacy service in the USA, PrivacyGuardian.org.
The Panel notes that similarities in the content of the pages where the Domain Names resolve, combined with the relevant proximity in time of the registration of all the above are indications of a common control. This along with the fact that the named Respondents of these Domain Names did not submit any arguments to rebut this inference is taken into account by the Panel.
The Panel finds that consolidation of the above Domain Names is fair to the Parties, and Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint but have chosen not to rebut the consolidation (see WIPO Overview 3.0, sections 4.11.1 and 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302). Based on the file, the Panel finds that it is more likely than not that the Domain Names are in common control of one entity, and hence the Panel grants the consolidation for the above Domain Names (and will refer to these Respondents as “Respondent”).
4. Factual Background
Per Complaint, Complainants are a provider of high end sports apparel and shoes, in particular running shos, which can be bought at over 6500 premium retail stores in over 50 countries or online through Complainants’ online shop at “www.on-running.com”. In addition to its headquarters in Zurich, Switzerland, Complainants have offices in the USA, Canada, Japan, Australia, Germany, Brazil, China and Viet Nam. Complainants’ products have won various international design and technology awards and have been advertised by sports celebrities, such as Roger Federer and Dwayne "The Rock". Complainants are the "Official Partner" of the Swiss Olympic team (www.on-running.com/en-us/articles/its-official-on-partners-with-the-swiss_olympic).
Second Complainant is the owner of inter alia the following trademark registrations:
- International Trademark registration No. 1050016 ON (word), registered on April 21, 2010, for goods in international classes 25 and 28;
- International Trademark registration No. 1185372 ON RUNNING (word), registered on October 25, 2013, for goods in international classes 25 and 28;
- International Trademark registration No. 1361124 CLOUD (word), registered on May 4, 2017, for goods in international classes 25 and 28;
- International Trademark registration No. 1503051 ON (figurative), registered on September 24, 2019, for goods in international classes 09, 18, 24, 25 and 28;
- International Trademark registration No. 1258068 RUN ON CLOUDS (word), registered on May 22, 2015, for goods in international classes 25, 28 and 42; and
- International Trademark registration No. 1346008 CLOUDRUSH (word), registered on February 24, 2017, for goods in international classes 25, 28 and 42.
The Domain Names were registered as follows:
1) <oncloudblackfriday.com>, registered on November 18, 2021;
2) <onrunning-shoes-australia.com>, registered on October 14, 2021;
3) <onrunning-nederland.com>, registered on June 21, 2021;
4) <oncloud-skor.com>, registered on November 5, 2021;
5) <oncloudtrainerssaleuk.com>, registered on November 4, 2021;
6) <cloudrusheshop.com>, registered on July 5, 2021;
7) <oncloudsingapore.com>, registered on June 17, 2021;
8) <onrunningsaleuk.com>, registered on April 22, 2021;
9) <oncloudbrasil.com>, registered on July 6, 2021;
10) <onrunnerza.com>, registered on July 6, 2021;
11) <onrunnersportugal.com>, registered on June 19, 2021;
12) <onrunnerireland.com>, registered on July 6, 2021;
13) <onrunnernederland.com>, registered on July 6, 2021;
14) <onrunnerturkiye.com>, registered on July 6, 2021;
15) <onrunningscarpe.com>, registered on April 25, 2021;
16) <onrunningindia.com>, registered on June 21, 2021.
The Domain Names lead, at the time of filing of the Complaint, to an equal number of Websites mimicking Complainants and containing links appearing related to Complainants’ business, with names including the word “cloud”, some terms related to Complainants’ business (e.g. “scarpe”) or other terms related to countries (e.g. “Portugal” “Nederland”, etc) in which the Complainants operate their activity. The sixteen websites were copies of Complainants’ original online shop on their website at “www.on-running.com”. They contain Complainants’ logo in the top left corner. Furthermore, the ten Websites reproduced copyrighted product photos and descriptions that were copied from the original online shop of Complainants. The Websites impersonate Complainants by using their name and logo. There is no indication that they are not operated by or affiliated to Complainants. They do not have an imprint or a “about us” section. The “contact us” page contains solely a form without any further information. Per Complaint, they form part of a large number of fake online shops, operated under various domain names ( WIPO Case No.s: 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). Currently the Domain Names lead to inactive or blocked websites.
5. Parties’ Contentions
A. Complainants
Complainants assert that they have established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.
B. Respondent
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) 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.
A. Identical or Confusingly Similar
Complainants have demonstrated rights through registration and use on the ON, CLOUD, ON RUNNING and CLOUDRUSH marks.
The Panel finds that the Domain Names are confusingly similar to the above trademarks of Complainants.
The Domain Names incorporate the said trademarks of Complainants in their entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the names of different countries in various languages and/or state name abbreviations and/or words related to the Complainants’ specific goods and services in different languages (such as “scarpe” which means “shoes” in Italian, “skor” which means “shoes” in Swedish, and English terms such as “runner”, “eshop”, “black Friday”, etc) and/or hyphens and/or the slight amendment of Complainants’ marks such as “onrunner” instead of “onrunning”, as the case may be, do not prevent a finding of confusing similarity, as the marks of Complainants each time remain clearly recognizable (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434, WIPO Overview 3.0 section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Names are confusingly similar to the above trademarks of Complainants.
Complainants have established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainants, Respondent was not authorized to register the Domain Names.
Respondent did not demonstrate any bona fide use of the Domain Names prior to the notice of the dispute.
Furthermore, as Complainants demonstrated, the Domain Names resolved, at the time of filing of the Complaint, to the Websites containing content that suggested falsely that the Websites were those of Complainants or of an affiliated entity or of an authorized partner of Complainants.
Per Complaint, Respondent is not an affiliated entity or an authorised distributor or partner of Complainants and no agreement, express or otherwise, exists allowing the use of Complainants’ trademarks on the Websites and the use of the Domain Names by Respondent.
A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1: (i) respondent must actually be offering the goods at issue; (ii) respondent must use the site to sell only the trademarked goods; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark.
These requirements are not cumulatively fulfilled in the present case. The Domain Names falsely suggest that the Websites were official sites of Complainants or of an entity affiliated to or endorsed by Complainants. The Websites extensively reproduced, without authorization by Complainants, Complainants’ trademarks, some of them also, copyrighted material of Complainants, without any authorisation and without disclaimer of association (or lack thereof) with Complainants.
Furthermore, the use of a domain name, which intentionally trades on the fame of another and suggested affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.5).
In addition, the Domain Names incorporate entirely Complainants’ marks, with added terms, which directly describe Complainants’ business and thus carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.
Complainants have established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainants, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or
(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith. Because the ON, CLOUD, ON RUNNING and CLOUDRUSH marks had been widely used and registered at the time of the Domain Names registration by Respondent, the Panel finds it more likely than not that Respondent had Complainants’ mark in mind when registering the Domain Names.
Respondent should have known about Complainants’ rights, as such knowledge is readily obtainable through a simple Internet search due to Complainants’ use of their marks (Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462).
Furthermore, Respondent could have conducted a trademark search and would have found Complainants’ prior registrations in respect of the said marks (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
Furthermore, the Domain Names incorporate in whole Complainants’ marks plus additional non-distinctive words, therefore creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation or endorsement of the Domain Names.
The Websites’ content, eminently displaying Complainants’ trademarks and offering for sale goods bearing Complainants’ trademarks, further supports knowledge of Complainants and their field of activity.
As Complainants demonstrated, the Websites’ content were targeting Complainants’ trademark, as they prominently displayed Complainants’ marks and products bearing Complainants’ trademarks, as well as copyrighted photos of Complainants. This further supports a finding of registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Names as in some way endorsed by or connected with Complainants (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).
As regards bad faith use of the Domain Names, Complainants have demonstrated that the Domain Names were used to resolve to the Websites, which prominently displayed Complainants’ registered trademarks, logos, and images, offering for sale goods bearing Complainants’ trademarks, thereby giving the false impression that they were operated by Complainants or a company affiliated to Complainants or an authorised reseller or partner of Complainants. The Domain Names operated therefore by intentionally creating a likelihood of confusion with Complainants’ trademark and business as to the source, sponsorship, affiliation or endorsement of the Websites they resolved to. This supports the finding of bad faith use (WIPO Overview 3.0, section 3.1.4).
Currently, the Domain Names lead to inactive websites. The non-use of a domain name would not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003;WIPO Overview 3.0, section 3.3).
Furthermore, some of the Domain Names were registered with a privacy shield service to hide the holder’s identity.
Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Names in bad faith.
Complainants have established Policy, paragraph 4(a)(iii).
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 Domain Names, <cloudrusheshop.com>, <oncloudblackfriday.com>, <oncloudbrasil.com>, <oncloudsingapore.com>, <oncloud-skor.com>, <oncloudtrainerssaleuk.com>, <onrunnerireland.com>, <onrunnernederland.com>, <onrunnersportugal.com>, <onrunnerturkiye.com>, <onrunnerza.com>, <onrunningindia.com>, <onrunning-nederland.com>, <onrunningsaleuk.com>, <onrunningscarpe.com>, <onrunning-shoes-australia.com> be transferred to the Complainants.
Marina Perraki
Sole Panelist
Date: February 11, 2022