WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Legero Verwaltung GmbH, LEGERO Schuhfabrik Gesellschaft mbH v. Alexis Arnaud

Case No. D2020-2080

1. The Parties

The Complainant is Legero Verwaltung GmbH, Austria and LEGERO Schuhfabrik Gesellschaft mbH, Austria, represented by Stolitzka & Partner Rechtsanwälte OG., Austria.

The Respondent is Alexis Arnaud, France.

2. The Domain Name and Registrar

The disputed domain name <superfithausschuhe.online> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2020. On August 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 21, 2020.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2020.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on September 29, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainants, Legero Verwaltung GmbH and LEGERO Schuhfabrik Gesellschaft mbH, are companies incorporated in Austria active in the business of footwear and market their products under the trademark SUPERFIT.

The Complainant is the owner of the trademark containing or comprising SUPERFIT across various jurisdictions and possesses numerous trademark registrations. These registrations include:

- European Union trademark with registration No. 011241767, registered on January 28, 2013, in International classes 18, 24 and 25;

- International trademark with registration No. 1285012, registered on September 8, 2015, in International classes 18, 24 and 25, designating the European Union;

- United States of America trademark with registration No. 4729557, registered on May 5, 2015, in International class 18;

- United States of America trademark with registration No. 1929431, registered on October 24, 1995, in International class 25.

Additionally, the Complainant is also the registrant of the domain name <superfit.com>, containing the trademark SUPERFIT.

The disputed domain name was registered on May 27, 2020, well after the Complainant secured rights to the trademarks. According to the Complainant, the disputed domain name is exclusively used to sell footwear. The Panel has been unable to find any active website connected to the disputed domain name and no screenshots have been provided by either Party.

5. Parties’ Contentions

A. Complainant

On the merits, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the disputed domain name is confusingly similar to the registered trademark in which the Complainant has rights. It represents that the disputed domain name is an agglomeration of the Complainants’ trademark SUPERFIT and the German generic term “hausschuhe” which means “slippers”.

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name.

According to the Complainants the Respondent has no rights or legitimate interests in the disputed domain name as there is no contractual relation between the Respondent and the Complainants and the Complainants have not given a license to the use of their trademark.

The Complainants further contend that it is clear that the Respondent seeks to pass itself off as the Complainants by mimicking the Complainants’ website.

Moreover, the Respondent does not appear to have used the disputed domain name for any legitimate noncommercial purpose. The disputed domain name resolves to a website selling footwear. In doing so, the Respondent is trying to exploit the Complainants’ trademark.

(c) the disputed domain name was registered and is being used in bad faith.

The Complainants assert that by registering the disputed domain name, consisting entirely in the Complainants’ trademark, the Respondent has internationally attempted for commercial gain to attract Internet users to its website by creating a likelihood of confusion with the Complainants’ trademark as to the source, the location of the Complainants’ products or services on the Respondent’s website.

Additionally, the Complainants states that the website of the Respondent prominently displays the Complainants’ logo and the Complainants’ trademark with no other indications about the source of the products sold on the website. It is therefore certain that the disputed domain was registered in bad faith to economically exploit the Complainants’ trademark and to create a likelihood of confusion for neutral consumers looking for footwear produced by the Complainants.

According to the Complainants, the Respondent has therefore no bona fide interest in the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainants have clearly evidenced that they have registered trademark rights to SUPERFIT.

Secondly, the disputed domain name fully incorporates the Complainants’ SUPERFIT trademark in which the Complainants have exclusive rights.

Thirdly, this Panel finds that the addition of the descriptive German term “hausschuhe” does not constitute an element so as to prevent a finding of confusing similarity for purposes of the Policy. See in this regard section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), stating that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity.

Fourthly, this Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD”) “.online” to the disputed domain name is viewed as a standard registration requirement and as such is to be disregarded.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainants’ SUPERFIT trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of the UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

The Respondent has not filed a Response, and the Panel has not found any evidence in the record that could establish rights to or legitimate interests in the disputed domain name on the part of the Respondent.

In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

- there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant;

- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place;

- there is no evidence that the Respondent has been commonly known by the disputed domain name.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

With regard to the Respondent’s registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the SUPERFIT trademark prior to registering the disputed domain name.

The Complainant has provided no evidence as to how the disputed domain name would mimic the design of the Complainants’ website (for instance, no screenshots of the Complainants’ and the Respondent’s websites have been provided). On the other hand, the Panel notes that the Complainant has been offering its products under the domain name <superfit.com> and that the disputed domain name is confusingly similar to the Complainants’ trademark. The Panel therefore finds it likely that the Respondent had the Complainants’ business in mind when it registered the disputed domain name. This finding is also supported by the fact that the disputed domain name incorporates the Complaints trademark with a descriptive German word, and the Complainants offer products under the SUPERFIT trademark in Germany and Austria, where German is the official language and where consumers are likely to speak and understand German.

The Panel notes in addition that according to the copies of the registration of the Complainants’ trademarks, each of them was registered many years before the disputed domain name was registered. There can be no doubt that the Respondent was aware of the Complainants’ trademark at the time the Respondent registered the disputed domain name in May 2020.

As for the use of the disputed domain name as described above, the Panel notes the claims of the Complainant regarding the Respondent’s alleged impersonating and competing use of the disputed domain name. Use of a domain name, such as the Complainant describes, would tend to support an inference of bad faith.

Moreover, at the time of the Decision, the Panel has found that the disputed domain name does not resolve to an active website. That fact does not prevent a finding of bad faith. Non-use of a domain name can, in certain circumstances, constitute a domain name being used in bad faith. The Panel has considered whether, in the circumstances of this particular case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith. Relying on Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel concludes that the Complainants have proven bad faith under the passive holding doctrine, noting, inter alia, the reputation of the Complainant’s trademark and the implausibility of any good faith use to which the disputed domain name may be put.

Furthermore, the Panel finds the Respondent’s use of a privacy service to be a further indicator of the Respondent’s bad faith. Additionally, the Respondent has not filed a Response, and has therefore not provided any evidence to rebut the Complainants’ allegations

Under these circumstances, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <superfithausschuhe.online> be cancelled.

Benoit Van Asbroeck
Sole Panelist
Date: October 13, 2020