WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupe Royer v. Withheld for Privacy Purposes, Privacy service provided by Withheld / Morton Palmerston

Case No. D2021-1660

1. The Parties

The Complainant is Groupe Royer, France, represented by SafeBrands, France.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld, Iceland / Morton Palmerston, United States of America.

2. The Domain Name and Registrar

The disputed domain name <kickbottes.online> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 27, 2021, 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 May 28, 2021, 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 amendment to the Complaint on May 28, 2021.

The Center verified that the Complaint together with the amendment to the 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 June 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2021.

The Center appointed Nick J. Gardner as the sole panelist in this matter on July 1, 2021. 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 Complainant is a French company and owns via various subsidiaries a number of well known footwear brands. In 2017, the group estimated its turnover at 310 million euros, achieved in 70 countries with 800 employees. In particular it is the parent company of the Dutch company Kickers International BV which manufactures and distributes footwear under the “Kickers” brand. The filed evidence establishes that brand is very well known and successful. It owns numerous trademarks for the word “Kickers” including for example French trademark no.1559708 registered July 6, 1989. These trademarks are referred to in this decision as the “KICKERS trademark”.

The Complaint principal website is linked to the domain name <kickers.com> which was registered on April 2, 1998. It owns numerous other domain names which include the trademark KICKERS including for example -<kickers.fr>, <chaussureskickers.com>, <kickers.clothing> and <kickersshop.com>.

The Disputed Domain Name was registered on December 21, 2020. It is linked to a website (the “Respondent’s Website”) which uses the Complainant’s KICKERS trademark to give the impression it is a genuine website of the Complainant. It offers for sale what purports to be a range of Kickers branded footwear at prices significantly less than the Complainant’s normal retailers would charge – in some cases a discount of up to 80 per cent is advertised.

Emails received by the Complainant show that customers have placed orders on the Respondent’s Website believing it to be a website operated by or with the permission of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant’s case is set out in some detail but it can be summarized as follows.

a) The Disputed Domain Name is identical or confusingly similar to the KICKERS trademark. The Complainant notes that the word “bottes” in French translates to “boots” in English.

b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

c) The Respondent has registered and used the Disputed Domain Name in bad faith. The Complainant says the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by use of domain name confusingly similar to the Complainant’s KICKERS trademark. It says the Respondent has unfairly tried to take advantage of the KICKERS trademark. It also says the products offered for sale on the Respondent’s Website are likely counterfeit given the low prices they are offered at.

B. Respondent

No Response has been filed.

6. Discussion and Findings

6.1. Preliminary Matters

The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

The Panel also notes this is a case where one Respondent (Withheld for Privacy Purposes, Privacy service provided by Withheld) appears to be a privacy or proxy service.

The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”

In the present case, the Panel considers the substantive Respondent to be Morton Palmerston, and references to the Respondent are to that person.

6.2. Substantive Matters

Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements in respect of the Disputed Domain Name:

(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name;

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the KICKERS trademark.

The Panel finds the Disputed Domain Name is confusingly similar to the KICKERS trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694). In the present case, the Disputed Domain Name combines a shortening of the Complainant’s well-known KICKERS trademark (i.e. “kick”) with a descriptive term – the French word for boots.

It is well established that the addition of a descriptive term (such as here “bottes”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).

It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.online”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.

While UDRP panels typically do not refer to the content of the website under the first element, in this case the website associated with the disputed domain name targets the Complainant’s KICKERS trademark and products, which affirms the confusing similarity. Se section 1.15 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:

“(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 organisation) 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.”

None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the KICKERS trademark. The Complainant has prior rights in the KICKERS trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce relevant evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).

The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present circumstances, the Panel concludes that the Respondent chose to register a name confusingly similar to the Complainant’s KICKERS trademark in order to facilitate a business where the Respondent’s Website could offer for sale goods which purport to be branded “Kickers” footwear. Manifestly the choice of a confusingly similar name was not coincidental.

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

“(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 web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

In the present circumstances the Panel agrees with the Complainant that factor (iv) applies as the Respondent was seeking to attract customers by creating a likelihood of confusion with the Complainant's KICKERS trademark. The Respondent’s Website masquerades as a website operated by or with the authority of the Complainant when that is not the case. The Disputed Domain Name is clearly intended to assist in that deception. The Complainant’s evidence shows that customers have been deceived. The Panel also notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists. In reaching this finding the Panel does not need to reach a conclusion as to whether the goods the Respondent is offering for sale are counterfeit or not.

Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <kickbottes.com>, be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: July 15, 2021