Wolverine World Wide, Inc. v. Eric Engel / Ines Neustadt / Wolfgang Schreiber / Juliane Abt / Laura Theiss / Christian Reinhardt / Manuela Burger
Claim Number: FA2002001884176
Complainant is Wolverine World Wide, Inc. (“Complainant”), represented by Amber Underhill of Warner Norcross + Judd LLP, Michigan, USA. Respondent is Eric Engel / Ines Neustadt / Wolfgang Schreiber / Juliane Abt / Laura Theiss / Christian Reinhardt / Manuela Burger (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sauconydiscount.com>, <sauconyshoesau.com>, <sauconyshoesaustralia.com>, <sauconyoutletstore.com>, <sauconyau.com>, <sauconywebshop.com>, and <sauconyturkey.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2020; the Forum received payment on February 21, 2020.
On February 21, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <sauconydiscount.com>, <sauconyshoesau.com>, <sauconyshoesaustralia.com>, <sauconyoutletstore.com>, <sauconyau.com>, <sauconywebshop.com>, and <sauconyturkey.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sauconydiscount.com, postmaster@sauconyshoesau.com, postmaster@sauconyshoesaustralia.com, postmaster@sauconyoutletstore.com, postmaster@sauconyau.com, postmaster@sauconywebshop.com, postmaster@sauconyturkey.com. Also on February 25, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Paragraph 3(c) of the 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.”
The Panel in this case finds sufficient evidence that the domain names are most likely controlled by the one person or entity who has registered the names under various aliases. In support thereof, the Panel observes that the domain names were all registered in 2019, some closely in time; that the domain names all resolve to identical content; finally, that the names all take a similar form, comprising Complainant’s trademark followed by the addition of a geographical or generic term.
Accordingly, the Panel treats the named domain name holders as a single entity, hereinafter referring to all as “Respondent”.
A. Complainant
Complainant asserts trademark rights in SAUCONY. Complainant holds a national registration for that trademark. Complainant submits that the domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain names. It states that upon information and belief, Respondent is mostly selling counterfeit copies of Complainant’s branded goods.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells footwear by reference to the trademark SAUCONY which is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 1,356,744, registered August 27, 1985;
2. the disputed domain names were registered on the following dates:
|
<sauconydiscount.com> |
June 11, 2019 |
|
<sauconyshoesau.com> |
June 14, 2019 |
|
<sauconyshoesaustralia.com> |
January 22, 2019 |
|
<sauconyoutletstore.com> |
May 26, 2019 |
|
<sauconyau.com> |
May 29, 2019 |
|
<sauconywebshop.com> |
June 6, 2019 |
|
<sauconyturkey.com> |
June 19, 2019 |
3. the domain names resolve to identical websites where footwear is offered for sale by reference to the trademark.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of the trademark with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain name with the trademark the gTLD, “.com” can be disregarded. The disputed domain names then take the trademark to which they add descriptives words and/or country names. The Panel finds that none of the additions to the trademark avoids a finding of confusingly similarity (see, for example, Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”; Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
There is no indication that Respondent might be commonly known by any of the domain names. There is no evidence that Respondent has any trademark rights. Complainant states that it “sells its products through a network of authorized distributors. To the best of Complainant’s knowledge, it does not believe that Respondent is now, or has ever been, a distributor authorized by Complainant to sell its products.” The fact that Complainant is to some degree uncertain whether or not the goods are counterfeit is unimportant since all that it need establish is that the trademark has been used without permission and Respondent has not shown itself to be an authorized re-seller of Complainant’s branded goods. Complainant has therefore made a prima facie case (see, for example, General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”)
The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. The resolving websites exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the disputed domain names to attract, for commercial gain, internet users to its websites by creating a likelihood of confusion with as to the source, sponsorship, affiliation, or endorsement of those websites.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sauconydiscount.com>, <sauconyshoesau.com>, <sauconyshoesaustralia.com>, <sauconyoutletstore.com>, <sauconyau.com>, <sauconywebshop.com> and <sauconyturkey.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 23, 2020
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