On AG and On Clouds GmbH v. Cosgrove Harriet
Claim Number: FA2104001941648
Complainant is On AG and On Clouds GmbH (“Complainant”), represented by Adrian Fischbacher of Rentsch Partner AG, Switzerland. Respondent is Cosgrove Harriet (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onrunningcloud.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2021; the Forum received payment on April 20, 2021.
On April 19, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <onrunningcloud.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 26, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2021 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@onrunningcloud.us. Also on April 26, 2021, 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 May 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Paragraph 15(a) of the Rules for Uniform In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two named Complainants in this matter are On AG and On Clouds GmbH. Complaints are related in that they together provide high end sports apparel and running shoes through retail stores and the “www.on-running.com” webstore. Furthermore, Complainants share the same physical address and certain trademarks are registered to On Clouds GmbH c/o On AG. Respond raises no objection to characterizing the Complainants as a single entity for the purpose of this dispute. The Panel therefore finds that the two Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of herein such that they may be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names).
A. Complainant
Complainant contends as follows:
Complainant has rights in the ON RUNNING and CLOUD marks based on registration with the World Intellectual Property Organization (“WIPO”).
Respondent’s <onrunningcloud.us> domain name is confusingly similar to Complainant’s marks because it simply combines Complainant’s ON RUNNING and CLOUD marks, omitting the spaces and also adding the “.us” country-code top-level domain (“ccTLD”).
Respondent does not have rights or legitimate interests in the <onrunningcloud.us> domain name as Respondent does not have any bona fide interest in the disputed domain name.
Respondent registered or uses the <onrunningcloud.us> domain name in bad faith. Respondent engages in a pattern of bad faith registration or use based on Respondent’s registration of various infringing domains and previous UDRP cases. Additionally, Respondent uses the domain name to pass off as Complainant by hosting a fake version of Complainant’s webstore.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ON RUNNING and CLOUD marks.
Complainant’s rights in the ON RUNNING and CLOUD mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant to host a counterfeit version of Complainant’s online store.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has WIPO registrations for its ON RUNNING and CLOUD trademarks. Such registrations are sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Häfele Vietnam LLC v. Cong Hoan, FA 1813668 (Forum Nov. 28, 2018) (“Registration of a mark with the WIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <onrunningcloud.us> domain name contains Complainant’s ON RUNNING trademark, less its space. The trademark is followed by Respondent’s CLOUD trademark with all followed by the “.us” country-code top-level domain name. The differences between Respondent’s domain name and Complainant’s trademarks are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <onrunningcloud.us> domain name is confusingly similar to Complainant’s marks. See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for <onrunningcloud.us> identifies the domain name’s registrant as “Cosgrove Harriet” and the record before the Panel contains no evidence showing that Respondent is commonly known by its <onrunningcloud.us>domain name or by either of Complainant’s ON RUNNING or CLOUD marks. The Panel therefore concludes that Respondent is not commonly known by the <onrunningcloud.us> domain name for the purposes of Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also, Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Additionally, Respondent uses <onrunningcloud.us> to pass itself off as Complainant in furtherance of diverting internet users to Respondent’s website. Respondent’s <onrunningcloud.us> website prominently displays Complainant’s trademark, mimic’s Complainant’s official website, and offers goods that compete with goods offered by Complainant. Respondent’s use the of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(ii), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iv). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing and absent any contrary evidence, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights or legitimate interests, Respondent uses the confusingly similar <onrunningcloud.us> domain name to address an unauthorized copy of Complainant’s website offering goods that are in competition with Complainant’s offering. Using a confusingly similar domain name as Respondent does here is disruptive to Complainant’s business and falsely indicates that there is a sanctioned relationship between Complainant and Respondent when there is no such relationship. Respondent’s use of the domain name in this manner demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Twitter v. Domain Admin, FA 1607451 (Forum Apr. 2, 2015) (“Respondent’s use of the domain name disrupted Complainant’s business and misappropriated the trademark value of Complainant’s mark to wrangle visitors to its website thereby demonstrating Respondent’s bad faith registration and use of the name pursuant to Policy ¶ 4(b)(iii).”); see also, Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum July 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”).
Moreover, Complainant’s shows that Respondent registered numerous domain names that likewise address bogus webstores pretending to be associated with Complainant and that Respondent has suffered multiple adverse UDRP decisions concerning confusingly similar domain names. Respondent’s history illustrations a pattern of domain name abuse and thereby further indicates Respondent’s bad faith in the instant case under Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“Complainant has provided evidence that Respondent has a history of UDRP and USDRP decisions decided against it. This establishes bad faith within the meaning of Policy ¶ 4(b)(ii).”).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onrunningcloud.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 21, 2021
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