Athletic Propulsion Labs LLC v. Wallin ELMA / Bernd FAERBER / Stefan Holtzmann / Johanna Rothstein / Client Care / Web Commerce Communications Limited / Melikssa Melikssa
Claim Number: FA2205001995667
Complainant is Athletic Propulsion Labs LLC (“Complainant”), represented by Matthew D. Witsman of Foley & Lardner LLP, District of Columbia, USA. Respondent is Wallin ELMA / Bernd FAERBER / Stefan Holtzmann / Johanna Rothstein / Client Care / Web Commerce Communications Limited / Melikssa Melikssa (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <apl-shoes-singapore.com>, <aplshoessingapore.com>, <aplshoeaustralia.com>, <aplshoecanada.com>, <aplshoephilippines.com>, <aplshoesdubai.com>, <aplshoesireland.com>, <aplshoesmalaysia.com>, <aplshoessale.com>, <apl-nz.com>, <apltrainersuk.com>, <aplireland.com>, <apl-ireland.com>, and <athleticpropulsionlabsusa.com>, registered with NETIM SARL; MAT BAO CORPORATION; Gransy, s.r.o.; or ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2022; the Forum received payment on May 10, 2022.
On May 11, 2022, NETIM SARL; MAT BAO CORPORATION; Gransy, s.r.o.; and ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <apl-shoes-singapore.com>, <aplshoessingapore.com>, <aplshoeaustralia.com>, <aplshoecanada.com>, <aplshoephilippines.com>, <aplshoesdubai.com>, <aplshoesireland.com>, <aplshoesmalaysia.com>, <aplshoessale.com>, <apl-nz.com>, <apltrainersuk.com>, <aplireland.com>, <apl-ireland.com>, and <athleticpropulsionlabsusa.com> domain names are registered with NETIM SARL; MAT BAO CORPORATION; Gransy, s.r.o.; or ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. NETIM SARL; MAT BAO CORPORATION; Gransy, s.r.o.; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED have verified that Respondent is bound by the NETIM SARL; MAT BAO CORPORATION; Gransy, s.r.o.; or ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED registration agreements 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 May 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2022 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@apl-shoes-singapore.com, postmaster@aplshoessingapore.com, postmaster@aplshoeaustralia.com, postmaster@aplshoecanada.com, postmaster@aplshoephilippines.com, postmaster@aplshoesdubai.com, postmaster@aplshoesireland.com, postmaster@aplshoesmalaysia.com, postmaster@aplshoessale.com, postmaster@apl-nz.com, postmaster@apltrainersuk.com, postmaster@aplireland.com, postmaster@apl-ireland.com, postmaster@athleticpropulsionlabsusa.com. Also on May 12, 2022, 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 June 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Complainant contends that each of the domain names incorporate the APL or ATHLETIC PROPULSION LABS mark combined with a geographic term, the term “shoe”, “shoes”, or “trainer” combined with a geographic term, or the descriptive term “sale”, each of the websites are copies of Complainant’s own website, the majority of the domain names list the registrant location as Kuala Lumpur, Malaysia, and all domain names were registered between October 2021 and January 2022. See Compl. Annx. B.
Having considered all the evidence and circumstances on the record, the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The proceeding may therefore go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant, Athletic Propulsion Labs LLC, markets its athletic footwear and apparel under the APL and ATHLETIC PROPULSION LABS marks. Complainant maintains registration in the APL mark with multiple trademark authorities including Canada, China, European Union, United States Patent and Trademark Office (USPTO), and among others. See Compl. Ex. A. Complainant asserts common law rights in the ATHLETIC PROPULSION LABS mark by virtue of it conducting business under that name. The <apl-shoes-singapore.com>, <aplshoessingapore.com>, <aplshoeaustralia.com>, <aplshoecanada.com>, <aplshoephilippines.com>, <aplshoesdubai.com>, <aplshoesireland.com>, <aplshoesmalaysia.com>, <aplshoessale.com>, <apl-nz.com>, <apltrainersuk.com>, <aplireland.com>, <apl-ireland.com>, and <athleticpropulsionlabsusa.com> (hereinafter collective referred to as “Disputed Domain Names”) are identical or confusingly similar because they wholly incorporate APL or ATHLETIC PROPULSION LABS mark and adds either a geographic term, the term “shoe,” “shoes,” or “trainer” and a geographic term, or the descriptive term “sale”, or a hyphen, with all domain names affixing the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the Disputed Domain Names because Respondent is not commonly known by the domain names nor has Respondent been authorized to use Complainant’s marks. Respondent further made use of a privacy service to conceal its identity at the time each domain’s registration. Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent impersonates Complainant by creating websites that replicates Complainant’s own website.
Respondent registered and uses the Disputed Domain Names in bad faith because
Respondent replicates Complainant’s own website to disrupt Complainant’s
business for Respondent’s own commercial gain. Respondent acted with actual, or
at a minimum constructive, knowledge of Complainant’s marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that produces athletic footwear and apparel under the APL and ATHLETIC PROPULSION LABS marks.
2. Complainant maintains registration of the APL mark with multiple trademark authorities including Canada, China, European Union, United States Patent and Trademark Office (USPTO), and among others.
3. Respondent registered the disputed domain names on the following dates: <apl-shoes-singapore.com> was registered on November 12, 2021; <aplshoessingapore.com> on October 5, 2021; <aplshoeaustralia.com> on January 19, 2022; <aplshoecanada.com> on January 19, 2022; <aplshoephilippines.com> on January 19, 2022; <aplshoesdubai.com> on January 19, 2022; <aplshoesireland.com> on January 19, 2022; <aplshoesmalaysia.com> on November 1, 2021; <aplshoessale.com> on January 18, 2022; <apl-nz.com> on November 1, 2021; <apltrainersuk.com> on October 9, 2021; <aplireland.com> on October 9, 2021; <apl-ireland.com> on November 1, 2021; and <athleticpropulsionlabsusa.com> on January 19, 2022.
4. Respondent has caused the domain names to impersonate Complainant by creating websites that replicates Complainant’s own website.
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. 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the APL mark through its registration with multiple trademark authorities. Registration of a mark with multiple authorities is sufficient to establish rights under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO.). Complainant provides copies of its registrations in the APL with authorities such as Canada (e.g. Reg. No. TMA859,033 – Registered on Sept. 3, 2013), China, European Union (e.g. Reg. No. 008510869 – Registered on Feb. 2, 2010), and the USPTO (e.g. Reg. No. 4,317,372 – Registered on Apr. 9, 2013), among other authorities. See Compl. Annx. A. The Panel has examined the evidence submitted by Complainant and finds that Complainants is correct and that it is the registered owner of the trademarks specified and that it therefore has both rights and legitimate interests in each of the trademarks. Therefore, the Panel finds that Complainant has rights in the APL mark under Policy ¶ 4(a)(i).
Complainant also submits that it has common law rights in the ATHLETIC PROPULSION LABS mark because it conducts business under that name. A complainant may successfully establish common law rights in a mark, under Policy ¶ 4(a)(i), by providing evidence such as longstanding use, marketing expenditures, and public notoriety. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). The Panel notes that the ATHLETIC PROPULSION LABS mark is also the name of Complainant’s business as recorded in its trademark filings with various authorities worldwide, including when filing for registration in the APL mark with the USPTO in 2009. See Compl. Annx. A. Therefore, the Panel finds that Complainant has rights in the ATHLETIC PROPULSION LABS mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s APL and ATHLETIC PROPULSION LABS marks. Complainant argues that the Disputed Domain Names are identical or confusingly similar to Complainant’s APL and ATHLETIC PROPULSION LABS marks because they incorporate either of Complainant’s marks while affixing a geographic and/or descriptive or generic term or hyphen and the “.com” gTLD to form the relevant domain name. A domain name may be identical or confusingly similar to a Complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of terms, hyphens, or gTLDs. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). The terms that are added are either “shoe”, “shoes,” “trainer,” “sale,” “singapore,” “australia,” “canada,” “phillippines,” “dubai,” “ireland,” “malaysia,” “nz,” “uk,” or “usa”. Only the <apl-nz.com>, <apl-ireland.com>, and <apl-shoes-singapore.com> incorporate a hyphen. Therefore, the Panel finds that in each case the Disputed Domain Names are identical or confusingly similar to Complainant’s APL or ATHLETIC PROPULSION LABS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s APL or ATHLETIC PROPULSION LABS mark and to use them in its respective domain names, adding terms that are either “shoe”, “shoes,” “trainer,” “sale,” “singapore,” “australia,” “canada,” “phillippines,” “dubai,” “ireland,” “malaysia,” “nz,” “uk,” or “usa”. Only the <apl-nz.com>, <apl-ireland.com>, and <apl-shoes-singapore.com> incorporate a hyphen;
(b) Respondent registered the disputed domain names on the following dates: <apl-shoes-singapore.com> was registered on November 12, 2021; <aplshoessingapore.com> on October 5, 2021; <aplshoeaustralia.com> on January 19, 2022; <aplshoecanada.com> on January 19, 2022; <aplshoephilippines.com> on January 19, 2022; <aplshoesdubai.com> on January 19, 2022; <aplshoesireland.com> on January 19, 2022; <aplshoesmalaysia.com> on November 1, 2021; <aplshoessale.com> on January 18, 2022; <apl-nz.com> on November 1, 2021; <apltrainersuk.com> on October 9, 2021; <aplireland.com> on October 9, 2021; <apl-ireland.com> on November 1, 2021; and <athleticpropulsionlabsusa.com> on January 19, 2022;
(c) Respondent has caused the domain names to impersonate Complainant by creating websites that replicates Complainant’s own website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent does not have any rights or legitimate interests in the Disputed Domain Names because Respondent is not commonly known by the domain names nor has Respondent been authorized to use Complainant’s APL or ATHLETIC PROPULSION LABS mark. Where a respondent does not provide evidence to the contrary, evidence of a respondent not being commonly known by a domain name, under Policy ¶ 4(c)(ii), may be found where the identifying WHOIS information is unrelated to a domain name and where a respondent is not authorized to use a complainant’s mark. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). WHOIS information lists the registrant of the domain names as either “Stefan Holtzmann,” “Johanna Rothstein,” Web Commerce Communications Limited / Client Care,” “ELMA Wallin,” “FAERBER Bernd,” or “Melikssa Melikssa”. See Registrar Verification Emails. Complainant submits that Respondent, and any persons or entities associated with Respondent, are not licensees or otherwise authorized to use Complainant’s APL nor ATHLETIC PROPULSION LABS mark. Therefore, the Panel finds that Respondent is not commonly known by the Disputed Domain Names under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent is not commonly known by the Disputed Domain Names because Respondent’s identity was concealed at the time of each domain’s registration. Use of a privacy service may be evidence of a respondent not commonly known by a domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). At the commencement of this proceeding, the registrant name for each domain name was withheld. See Compl. Annx. B. It was not until Registrar verification that the name of the registrant was revealed. See Registrar Verification Email. Therefore, the Panel finds that Respondent further is not commonly known by the Disputed Domain Names under Policy ¶ 4(c)(ii);
(g) Complainant argues Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent’s websites resolve to websites that are identical to Complainant’s own website. Evidence of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii), may be found where a respondent’s own website resolves to a website that is identical to a complainant’s. 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).”). Complainant submits that Respondent uses the domain names to mimic Complainant’s website and attract Complainant’s customers away from Complainant. The Panel notes, however, that Complainant does not provide any evidence to support its claim. The Panel determines that the absence of this evidence is non-material to Complainant’s request for relief, and the Panel finds that Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the Disputed Domain Names in bad faith because Respondent’s domain names disrupt Complainant’s business for its own commercial gain by passing off as Complainant. Use of a domain name to pass off as a complainant featuring complainant’s products may be evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant submits Respondent impersonates Complainant with websites that mimic Complainant’s own website featuring products that users would expect to find on Complainant’s own website. The Panel notes, however, that Complainant does not provide any evidence to support its claim. The Panel determines that the absence of this evidence is non-material to Complainant’s request for relief. The Panel therefore finds that Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the APL or ATHLETIC PROPULSION LABS marks. Complainant argues that Complainant’s continued and exclusive use of the marks as early as 2009 and Respondent’s use of the domain names to impersonate Complainant indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and it therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the APL or ATHLETIC PROPULSION LABS mark and in view of the conduct that Respondent has engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apl-shoes-singapore.com>, <aplshoessingapore.com>, <aplshoeaustralia.com>, <aplshoecanada.com>, <aplshoephilippines.com>, <aplshoesdubai.com>, <aplshoesireland.com>, <aplshoesmalaysia.com>, <aplshoessale.com>, <apl-nz.com>, <apltrainersuk.com>, <aplireland.com>, <apl-ireland.com>, and <athleticpropulsionlabsusa.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: June 8, 2022
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