URS DEFAULT DETERMINATION
Wolverine Outdoors, Inc. v. WhoisGuard, Inc. et al.
Claim Number: FA1808001800793
DOMAIN NAME
<buymerrell.online>
<merrellcompra.online>
<merrellvendita.online>
<merrellventa.online>
<merrellvente.online>
<merrellverkauf.online>
PARTIES
| Complainant: Wolverine Outdoors, Inc. of Rockford, MI, United States of America | |
|
Complainant Representative: Warner Norcross + Judd LLP
Amber Underhill of Grand Rapids, MI, United States of America
|
| Respondent: WhoisGuard, Inc. WhoisGuard, Inc. of Panama, PA | |
REGISTRIES and REGISTRARS
| Registries: DotOnline Inc. | |
| Registrars: Namecheap |
EXAMINER
| The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding. | |
| Hector Ariel Manoff, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: August 9, 2018 | |
| Commencement: August 13, 2018 | |
| Default Date: August 28, 2018 | |
| Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Findings of Fact: Complainant is one the world’s leading sellers of footwear, including MERRELL brand footwear, which has been in use, sold and marketed since 1982. Complainant is the owner of 12 active trademark registrations with the United States Patent and Trademark Office (“USPTO”) for marks that include the word MERRELL for a wide variety of products and services. These registrations are for the word MERRELL alone, as well as stylized versions, and the word MERRELL combined with logos and/or other words. The earliest of these registrations was issued in 1985. Complainant is also the owner of over 300 foreign trademark registrations for marks containing the term MERRELL alone, stylized, and with logos and/or word combinations associated with the MERRELL brand. Complainant’s MERRELL trademark and brand are well known the world over. Through a network of distributors, Complainant distributes MERRELL brand products in more than 100 countries and territories worldwide. Global sales totaled over US$533 million for 2017. |
|
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The disputed domain names <buymerrell.online>, <merrellcompra.online>, <merrellvendita.online>, <merrellventa.online>, <merrellvente.online> and <merrellverkauf.online> are confusingly similar to the Complainant’s Trademarks MERRELL. It combines the mentioned Trademark with the addition of generic or descriptive words, such as “online”, “buy”, “compra” (“purchase” in Spanish), “vendita” (“sale” in Italian), “venta” (“sale” in Spanish), “vente” (“sale” in French) and “verkauf” (“sale” in German), indicating the purpose of selling MERRELL related products. Examiner finds that the disputed domain names are confusingly similar to the Complainant’s trademark registrations and that Complainant has complied with URS 1.2.6.1 by demonstrating that the disputed domain name is confusingly similar to a mark for which the Complainant holds a valid national registration which is in current use. [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant Examiner finds that the disputed domain names are confusingly similar to the Complainant’s trademark registrations and that Complainant has complied with URS 1.2.6.1 by demonstrating that the disputed domain name is confusingly similar to a mark for which the Complainant holds a valid national registration which is in current use.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant Since Complainant’s famous trademarks are prior to the disputed domain names’ registration, Examiner concludes that the registration of the disputed domain name was made on bad faith. Regarding the use of the domain name, it is designed to attract users to its website where it impersonates Complainant. Furthermore, Examiner agrees with complainant in that Respondent’s use of the MERRELL mark owned by Complainant will clearly lead to confusion that Respondent is Complainant or a subsidiary, licensee, or affiliate of Complainant, when it is not. Thus, Respondent’s websites create a false association between Respondent and Complainant. Examiner finds that the disputed domain names are being used in bad faith to attract users for commercial gain and that Complainant has complied with URS 1.2.6.3. FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ submissions, the Examiner determines that the Complainant
has demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for
the duration of the registration:
|
Hector Ariel Manoff Examiner
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