Wolverine Outdoors, Inc. v. WhoisGuard, Inc. et al.
Claim Number: FA1911001872279
Complainant: Wolverine Outdoors, Inc. of Rockford, Michigan, United States of America.
Complainant Representative:
Complainant Representative: Warner Norcross + Judd LLP of Grand Rapids, Michigan, United States of America.
Respondent: WhoisGuard Protected / WhoisGuard, Inc. of Panama Panama, PA.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: DotOnline Inc.
Registrars: NameCheap, Inc.; NameSilo, LLC
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.
Jonathan Agmon, as Examiner.
Complainant submitted: November 21, 2019
Commencement: November 22, 2019
Default Date: December 9, 2019
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") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant is a wholly-owned subsidiary of Wolverine World Wide, Inc. Complainant and its parent are one of the world’s leading sellers of high-quality
footwear, including MERRELL brand footwear, which has been in use, sold and
marketed since 1982. The MERRELL product line is currently made up of hundreds of products, including shoes, boots, sandals, shirts, outerwear, pants, shorts, bags, and headgear along with other clothing and accessories.
Complainant is the owner of 12 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 asserts the following against the Respondent:
1. The registered domain name is identical or confusingly similar to a word or mark [URS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use;
2. Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2];
3. The domain name was registered and are being used in bad faith [URS 1.2.6.3] such as: Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
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:
(i) for which the Complainant holds a valid national or regional registration
and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the
time the URS complaint is filed.
Determined: Finding for Complainant
Complainant is the owner of the MERRELL registered trademark serial no. 1,835,495, which was registered on 10 May 1994 in the United States.
The disputed domain names includes the Complainant's mark in its entirety, followed by generic terms “buy”, “on”, “shop” respectively, together with the gTLD ".online". These additions are insufficient to distinguish the disputed domain names from the Complainant’s registered mark.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Complainant has not authorized Respondent to use its MERRELL mark. The Respondent is not commonly known by the registered domain name. The Respondent’s use is not a legitimate noncommercial or fair use, and is not in connection with a bona fide offering of goods or services.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith. a. Registrant 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 documented out-of-pocket costs directly related to the domain name; b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; c. Registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Registrant's web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
The Complainant provided evidence showing webpages under the respective disputed domain names, which prominently display the Complainant’s MERRELL trademark at the top of the homepage. The webpages also appears to sell counterfeit goods of the Complainant at a heavily discounted price. The evidence provided clearly shows that the Respondent is attempting to attract internet users looking for Complainant’s goods, and purposefully misleading internet users as to the source of the goods and/or website. By using Complainant’s trademark in the disputed domain names and hiding the identity of the website owner the Respondent is purposefully misleading users as to the source, sponsorship, or endorsement of the offerings under the disputed domain names. The evidence provided clearly shows that the Respondent was targeting the Complainant. Given the clear and convincing evidence filed by the Complainant, the conclusion is that the disputed domain names were registered and are being used in bad faith to disrupt the business of the Complainant and create a likelihood of confusion with the Complainant’s mark and that Complainant has complied with URS 1.2.6.3 (c) and (d).
After reviewing the Complainant’s 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 names be SUSPENDED for the duration of the registration.
<merrellbuy.online><merrellon.online><merrellshop.online>
Jonathan Agmon, Examiner
Dated: December 12, 2019
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