Wolverine World Wide, Inc. v. Client Care / Web Commerce Communications Limited / Joseph Graham / Lena Meyer / SimoneFrei / Maximilian Metzger
Claim Number: FA2302002033325
Complainant is Wolverine World Wide, Inc. (“Complainant”), represented by Malaina J Weldy of Warner Norcross + Judd LLP, Michigan, USA. Respondent is Client Care / Web Commerce Communications Limited / Joseph Graham / Lena Meyer / SimoneFrei / Maximilian Metzger (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <merrellshoes-clearance-uk.com>, <sandaliasmerrellargentina.com>, <merrellshoplondon.com>, <merrellcanadaoutlets.com>, <merrelloutletstore.com>, <merrelloutletcolombia.com>, <merrellsandaliitalia.com>, <merrellbootsphilippines.com>, <merrellbootsnewzealand.com>, <merrell-skodanmark.com>, <merrell-cr.com>, <merrellsandals-ireland.com>, <merrell-cl.com>, <merrellshoessingapore.com>, <merrellbutypl.com>, <merrellshoes-australia.com>, <tenismerrell-mexico.com>, <merrellschuhe-deutschland.com>, <merrellboty-cz.com>, <merrell-shoesgreece.com>, <merrellwalkingshoes-ireland.com>, <merrellshoesindiaonline.com>, <merrellhrvatskashop.com>, <merrellhikingshoesaustralia.com>, <merrellscarpeitalia.com>, <merrellcaracas.com>, <merrellquito.com>, <merrell-ecuador.com>, <outletsmerrellchile.com>, <zapatosmerrellmexico.com>, <merrellbuenosaires.com>, <merrelloutlet-argentina.com>, <zapatosmerrelluruguay.com>, <merrelloutlet-uruguay.com>, <sauconymalaysiastores.com>, <sauconycz.com>, <sauconysapatos.com>, <sauconyfactorystores.com>, <sauconyshoesmexico.com>, <sauconyshoesmalaysia.com>, <tenissauconycostarica.com>, <sauconycosta-rica.com>, <sauconyco.com>, <sauconymexicooutlet.com>, <sauconymexicoonline.com>, <outletsauconychile.com>, <sauconyec.com>, <merrellargentinaar.com>, <merrellrosario.com>, and <sauconyendorphinspeedphilippines.com>, registered with 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 KC as Panelist.
Complainant submitted a Complaint to Forum electronically on February 24, 2023; Forum received payment on February 24, 2023.
On March 1, 2023, Alibaba.Com Singapore E-Commerce Private Limited confirmed by e-mail to Forum that the <merrellshoes-clearance-uk.com>, <sandaliasmerrellargentina.com>, <merrellshoplondon.com>, <merrellcanadaoutlets.com>, <merrelloutletstore.com>, <merrelloutletcolombia.com>, <merrellsandaliitalia.com>, <merrellbootsphilippines.com>, <merrellbootsnewzealand.com>, <merrell-skodanmark.com>, <merrell-cr.com>, <merrellsandals-ireland.com>, <merrell-cl.com>, <merrellshoessingapore.com>, <merrellbutypl.com>, <merrellshoes-australia.com>, <tenismerrell-mexico.com>, <merrellschuhe-deutschland.com>, <merrellboty-cz.com>, <merrell-shoesgreece.com>, <merrellwalkingshoes-ireland.com>, <merrellshoesindiaonline.com>, <merrellhrvatskashop.com>, <merrellhikingshoesaustralia.com>, <merrellscarpeitalia.com>, <merrellcaracas.com>, <merrellquito.com>, <merrell-ecuador.com>, <outletsmerrellchile.com>, <zapatosmerrellmexico.com>, <merrellbuenosaires.com>, <merrelloutlet-argentina.com>, <zapatosmerrelluruguay.com>, <merrelloutlet-uruguay.com>, <sauconymalaysiastores.com>, <sauconycz.com>, <sauconysapatos.com>, <sauconyfactorystores.com>, <sauconyshoesmexico.com>, <sauconyshoesmalaysia.com>, <tenissauconycostarica.com>, <sauconycosta-rica.com>, <sauconyco.com>, <sauconymexicooutlet.com>, <sauconymexicoonline.com>, <outletsauconychile.com>, <sauconyec.com>, <merrellargentinaar.com>, <merrellrosario.com>, and <sauconyendorphinspeedphilippines.com> domain names are registered with Alibaba.Com Singapore E-Commerce Private Limited and that Respondent is the current registrant of the names. Alibaba.Com Singapore E-Commerce Private Limited has verified that Respondent is bound by the Alibaba.Com Singapore E-Commerce Private Limited 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 March 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2023 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@merrellshoes-clearance-uk.com, postmaster@sandaliasmerrellargentina.com, postmaster@merrellshoplondon.com, postmaster@merrellcanadaoutlets.com, postmaster@merrelloutletstore.com, postmaster@merrelloutletcolombia.com, postmaster@merrellsandaliitalia.com, postmaster@merrellbootsphilippines.com, postmaster@merrellbootsnewzealand.com, postmaster@merrell-skodanmark.com, postmaster@merrell-cr.com, postmaster@merrellsandals-ireland.com, postmaster@merrell-cl.com, postmaster@merrellshoessingapore.com, postmaster@merrellbutypl.com, postmaster@merrellshoes-australia.com, postmaster@tenismerrell-mexico.com, postmaster@merrellschuhe-deutschland.com, postmaster@merrellboty-cz.com, postmaster@merrell-shoesgreece.com, postmaster@merrellwalkingshoes-ireland.com, postmaster@merrellshoesindiaonline.com, postmaster@merrellhrvatskashop.com, postmaster@merrellhikingshoesaustralia.com, postmaster@merrellscarpeitalia.com, postmaster@merrellcaracas.com, postmaster@merrellquito.com, postmaster@merrell-ecuador.com, postmaster@outletsmerrellchile.com, postmaster@zapatosmerrellmexico.com, postmaster@merrellbuenosaires.com, postmaster@merrelloutlet-argentina.com, postmaster@zapatosmerrelluruguay.com, postmaster@merrelloutlet-uruguay.com, postmaster@sauconymalaysiastores.com, postmaster@sauconycz.com, postmaster@sauconysapatos.com, postmaster@sauconyfactorystores.com, postmaster@sauconyshoesmexico.com, postmaster@sauconyshoesmalaysia.com, postmaster@tenissauconycostarica.com, postmaster@sauconycosta-rica.com, postmaster@sauconyco.com, postmaster@sauconymexicooutlet.com, postmaster@sauconymexicoonline.com, postmaster@outletsauconychile.com, postmaster@sauconyec.com, postmaster@merrellargentinaar.com, postmaster@merrellrosario.com, and postmaster@sauconyendorphinspeedphilippines.com. Also on March 3, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 submitted 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 43 of the 50 disputed domain names have identical contact information, similar or identical IP locations, and identical and/or similar homepages, including contact information, naming style, registrar (all 50 disputed domain names were registered with Alibaba), and dates of registration. The seven disputed domain names that do not have identical contact information are related as they share identical and/or similar IP addresses and were registered on the same dates as other disputed domain names.
The evidence therefore shows that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. Accordingly, the proceeding was properly filed, comes within Rule 3(c) and may go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant, Wolverine World Wide, Inc., offers footwear and active wear apparel including footwear, hiking boots, rain jackets, and more under the MERRELL product line, and shoes, t-shirts, outerwear, pants, shorts, and bags under the SAUCONY line. Complainant submits that it has rights to the MERRELL mark and SAUCONY marks based upon registration of the marks with the United States Patent and Trademark Office (“USPTO”) (MERRELL e.g., reg. no. 1,337,440, registered May 21, 1985); (SAUCONY e.g., reg. no. 1,356,744, registered August 27, 1985). See Compl. Ex. A. Respondent’s disputed domain names are confusingly similar to Complainant’s marks because the contain either the MERRELL or SAUCONY mark in their entirety, merely adding generic terms, and/or geographic terms or a misspelling thereof, some including a hyphen, and all including the generic top-level domain name (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s MERRELL and/or SAUCONY marks and is not commonly known by the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to compete with Complainant by offering shoes/apparel that compete with Complainant’s business. Additionally, Respondent uses the disputed domain names to pass off as Complainant. Furthermore, Respondent is not making any active use of the disputed domain names.
Respondent registered and uses the disputed domain names in bad faith. Respondent registered and uses the disputed domain name to compete with Complainant by offering shoes/apparel that competes with Complainant’s business. Additionally, Respondent registered and uses the disputed domain names to pass off as Complainant for financial gain by attempting to portray itself as a subsidiary, affiliate, or authorized distributor of Complainant. Finally, Respondent is not actively using the disputed domain names.
Respondent registered the <sauconyfactorystores.com> domain name on November 29, 2021, the <sauconysapatos.com>, <sauconyshoesmexico.com> and <sauconyshoesmalaysia.com> domain names on January 10, 2022, the <merrelloutletcolombia.com> domain name on January 18, 2022, the <merrellscarpeitalia.com> domain name on February 8, 2022, the <merrellcanadaoutlets.com> domain name on February 9, 2022, the <merrelloutlet-argentina.com> domain name on February 17, 2022, the <sauconymalaysiastores.com> domain name on March 19, 2022, the <sauconymexicooutlet.com> domain name on July 20, 2022, the <merrelloutletstore.com> domain name on July 21, 2022, the <merrellargentinaar.com> domain name on July 23, 2022, the <sauconymexicoonline.com> domain name on August 20, 2022, the <zapatosmerrelluruguay.com> domain name on October 8, 2022, the <sauconycz.com>, <sauconyco.com> and <outletsauconychile.com> domain names on October 12, 2022, the <tenissauconycostarica.com> and <sauconyec.com> domain names on October 13, 2022, the <sandaliasmerrellargentina.com> domain name on November 7, 2022, the <outletsmerrellchile.com> and <zapatosmerrellmexico.com> domain names on November 8, 2022, the <sauconycosta-rica.com> domain name on November 17, 2022, the <merrelloutlet-uruguay.com> domain name on November 21, 2022, the <merrellrosario.com> domain name on November 23, 2022, the <merrellshoplondon.com> domain name on December 19, 2022, the <merrellcaracas.com>[i], <merrellquito.com>[ii], and <merrellbuenosaires.com>[iii] domain names on December 20, 2022, the <merrellshoesindiaonline.com> domain name on December 22, 2022, the <merrellbutypl.com>, <merrellshoes-australia.com>, <tenismerrell-mexico.com>, <merrellschuhe-deutschland.com>, <merrellboty-cz.com>, <merrell-shoesgreece.com> and <merrellwalkingshoes-ireland.com> domain names on December 29, 2022, the <merrell-cl.com> domain name on January 2, 2023, the <merrell-cr.com>, <merrellsandals-ireland.com>, <merrell-ecuador.com> and <sauconyendorphinspeedphilippines.com> domain names on January 5, 2023, the <merrell-skodanmark.com> domain name on January 8, 2023, the <merrellsandaliitalia.com>, <merrellbootsphilippines.com> and <merrellbootsnewzealand.com> domain names on January 11, 2023, the <merrellhrvatskashop.com> and <merrellhikingshoesaustralia.com> domain names on January 30, 2023, the <merrellshoessingapore.com> domain name on February 1, 2023, and the <merrellshoes-clearance-uk.com> domain name on February 3, 2023.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the production and sale of footwear and active wear apparel and in the provision of related goods and services.
2. Complainant has established its rights in the MERRELL and SAUCONY marks based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (MERRELL e.g., reg. no. 1,337,440, registered May 21, 1985); (SAUCONY e.g., reg. no. 1,356,744, registered August 27, 1985).
3. The disputed domain names were registered by Respondent on the respective dates set out above.
4.Respondent has caused the disputed domain names to be used to compete with Complainant by offering footwear and apparel that compete with Complainant’s business and to pass itself off as Complainant and Respondent is also not making any legitimate active use of any of the disputed domain names.
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 to the MERRELL mark and the SAUCONY mark based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., “MERRELL” reg. no. 1,337,440, registered May 21, 1985); (e.g., “SAUCONY” reg. no. 1,356,744, registered August 27, 1985). See Compl. Ex. A. Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating that “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant has provided evidence of registration of the MERRELL and SAUCONY marks, the Panel finds that Complainant has established its rights in the marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s MERRELL and SAUCONY marks. Complainant contends that Respondent’s disputed domain names are confusingly similar to the marks because they contain either the MERRELL or SAUCONY mark in its entirety, merely adding generic terms, and/or geographic terms or a misspelling thereof, some including a hyphen, and all including the generic top-level domain name (“gTLD”) “.com” to form the respective disputed domain name[iv] as set out hereunder. The addition of generic terms and a gTLD does not sufficiently distinguish a disputed domain name from a complainant’s mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Similarly, the addition of a geographic term and a gTLD does not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See 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).”). Furthermore, the addition of a hyphen does not differentiate a disputed domain name from a mark pursuant to Policy ¶ 4(a)(i). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)). As such, the Panel finds that the disputed domain names are confusingly similar to the MERRELL or SAUCONY marks respectively 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 names 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 MERRELL and SAUCONY marks and to use them respectively in its domain names making various alterations that do not negate the confusing similarity between the domain names and the trademarks;
(b) Respondent registered the disputed domain names on the respective dates set out above;
(c) Respondent has caused the disputed domain names to be used to compete with Complainant by offering footwear and apparel that compete with Complainant’s business and to pass itself off as Complainant and Respondent is also not making any legitimate active use of any of the disputed domain names;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant submits that Respondent does not have rights or legitimate interests in the disputed domain names as Respondent is not licensed or authorized to use Complainant’s MERRELL and/or SAUCONY marks and is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information lists the registrants of the disputed domain names as “Web Commerce Communications Limited”[v], “Joseph Graham”[vi], “Lena Meyer”[vii], “SimoneFrei”[viii], “Maximilian Metzger”[ix]. See Registrar Verification Email. As such, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to compete with Complainant by offering shoes/apparel that compete with Complainant’s business. The use of a disputed domain name to sell products and/or services that compete directly with a complainant’s business is neither 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). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “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).”). As support, Complainant provides screenshots of 30 of the 50 disputed domain names, which appear to offer Complainant’s products for sale along with Complainant’s marks and other trademarks owned by Complainant. See Compl. Ex. B; Compl. Ex. C. Thus, as the Panel agrees, it finds Respondent does not use the disputed domain names for any bona fide offering of goods or services under Policy ¶ 4(c)(i) or fair use under Policy ¶ 4(c)(iii);
(g) Complainant submits that Respondent uses the disputed domain names to pass itself off as Complainant. The use of a disputed domain name in an attempt to pass off as a complainant is not a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant points to the use of Complainant’s MERRELL and SAUCONY marks respectively and the terms “shop”, “boots”, “outlet”, and “shoes”, among others in the disputed domain names, at the top of homepages, and the offering of Complainant’s products. See Compl. Ex. B; Compl. Ex. C. Therefore, the Panel finds that Respondent does not use the disputed domain names for any bona fide offering of goods or services under Policy ¶ 4(c)(i) or fair use under Policy ¶ 4(c)(iii);
(h) Complainant contends that Respondent is not making any active use of the disputed domain names. The failure to make active use of a disputed domain name by a respondent is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides screenshots showing that the disputed domain names do not resolve to an active website in the United States. See Compl. Ex. C. As the Panel agrees, it finds Respondent does not use the disputed domain names for any bona fide offering of goods or services under Policy ¶ 4(c)(i) or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal 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 submits that Respondent registered and uses the disputed domain names in bad faith as Respondent registered and used them to compete with Complainant by offering shoes/apparel that compete with Complainant’s business. The use of a disputed domain name and a complainant’s mark to disrupt business and attract internet users for commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Here, Complainant provides screenshots of the disputed domain names’ resolving websites showing Complainant’s marks being displayed prominently, Complainant’s goods being offered for sale, and the use of Complainant’s marks in the disputed domain names. See Compl. Ex. B; Compl. Ex. C. Thus, as the Panel agrees, it finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered and uses the disputed domain names to pass itself off as Complainant for financial gain by attempting to portray itself as a subsidiary, affiliate, or authorized distributor. The use of a disputed domain name to resolve to a website which a respondent uses to pass itself off as a complainant is evidence of bad faith under Policy ¶ 4(b)(iv). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). Here, Complainant points to the use of Complainant’s MERRELL and SAUCONY marks respectively and the terms “shop”, “boots”, “outlet”, and “shoes”, among others in the disputed domain names, at the top of homepages, and the offering of Complainant’s products. See Compl. Ex. B; Compl. Ex. C. As the Panel agrees, it finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant submits that Respondent is not actively using the disputed domain names. The failure to make legitimate use of a disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). Here, Complainant provides screenshots showing that the disputed domain names do not resolve to active websites in the United States. See Compl. Ex. C. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
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 <merrellshoes-clearance-uk.com>, <sandaliasmerrellargentina.com>, <merrellshoplondon.com>, <merrellcanadaoutlets.com>, <merrelloutletstore.com>, <merrelloutletcolombia.com>, <merrellsandaliitalia.com>, <merrellbootsphilippines.com>, <merrellbootsnewzealand.com>, <merrell-skodanmark.com>, <merrell-cr.com>, <merrellsandals-ireland.com>, <merrell-cl.com>, <merrellshoessingapore.com>, <merrellbutypl.com>, <merrellshoes-australia.com>, <tenismerrell-mexico.com>, <merrellschuhe-deutschland.com>, <merrellboty-cz.com>, <merrell-shoesgreece.com>, <merrellwalkingshoes-ireland.com>, <merrellshoesindiaonline.com>, <merrellhrvatskashop.com>, <merrellhikingshoesaustralia.com>, <merrellscarpeitalia.com>, <merrellcaracas.com>, <merrellquito.com>, <merrell-ecuador.com>, <outletsmerrellchile.com>, <zapatosmerrellmexico.com>, <merrellbuenosaires.com>, <merrelloutlet-argentina.com>, <zapatosmerrelluruguay.com>, <merrelloutlet-uruguay.com>, <sauconymalaysiastores.com>, <sauconycz.com>, <sauconysapatos.com>, <sauconyfactorystores.com>, <sauconyshoesmexico.com>, <sauconyshoesmalaysia.com>, <tenissauconycostarica.com>, <sauconycosta-rica.com>, <sauconyco.com>, <sauconymexicooutlet.com>, <sauconymexicoonline.com>, <outletsauconychile.com>, <sauconyec.com>, <merrellargentinaar.com>, <merrellrosario.com>, and <sauconyendorphinspeedphilippines.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: April 4, 2023
[i] WHOIS Information deleted in CMS, See Compl. Ex. B-2.
[ii] Id.
[iii] Id.
[iv] MERRELL mark with generic term and gTLD: Complaint ¶ 26. MERRELL mark with generic term, geographic term, and gTLD: Complainant ¶ 23, 24, 25, 27, 28, 29, 30, 35, 36, 43, 44, 45, 46, 50, 51, 54, 71. MERRELL mark with generic term, geographic term, hyphen, and gTLD: Complaint ¶ 22, 31, 33, 37, 38, 39, 40, 41, 42, 53, 55. MERRELL mark with geographic term and gTLD: Complaint ¶ 47, 48, 52, 69, 70. MERRELL mark with geographic term, hyphen, and gTLD: Complaint ¶ 32, 34, 49. SAUCONY mark with generic term and gTLD: Complaint ¶ 58, 59. SAUCONY mark with generic term, geographic term, and gTLD: Complaint ¶ 56, 60, 61, 62, 65, 66, 67. SAUCONY mark with geographic term and gTLD: Complaint ¶ 57, 64, 68. SAUCONY mark with geographic term, hyphen, and gTLD: Complaint ¶ 63.
[v] 43 disputed domain names
[vi] <merrellshoplondon.com>, <merrellcaracas.com>, <merrellquito.com>, and <merrellbuenosaires.com> registered to “Joseph Graham”. See Registrar Verification Email.
[vii] <merrell-cl> registered to “Lena Meyer”. See Registrar Verification Email.
[viii] <merrellhikingshoesaustralia.com> registered to “SimoneFrei”. See Registrar Verification Email.
[ix] <merrelloutlet-uruguay.com> registered to “Maximilian Metzger”. See Registrar Verification Email.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page