Aldo Group International GmbH v Client Care, Web Commerce
WIPO Case No. D2024-3400
•24-10-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Aldo Group International GmbH v. Client Care, Web Commerce
Communications Limited
Case No. D2024-3400
1. The Parties
The Complainant is Aldo Group International GmbH, Switzerland, represented by Markmonitor, United
States of America (“United States”).
The Respondent is Client Care, Web Commerce Communications Limited, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <callitspringecuador.com> is registered with Alibaba.com Singapore E-
Commerce Private Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2024. On August 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2024, 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 (NOT DISCLOSED) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 27, 2024, 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 September 1, 2024.
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”).
The Complainant had initially included a request to transfer another domain name to the Complainant, based on the fact that information available prior to initiating the present Complaint indicated that both domain names were registered by the same registrant, or are under common control. Upon receiving the Center's notice of multiple underlying registrants, the Complainant chose to exclude the other domain name from the current Complaint.
page 2
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on September 11, 2024. In accordance with the Rules,
paragraph 5, the due date for Response was October 1, 2024. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on October 7, 2024.
The Center appointed Alexander Duisberg as the sole panelist in this matter on October 10, 2024. 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 Aldo Group International GmbH, a multinational company with its registered office in Switzerland. The Complainant and its affiliated companies are in the business of international trade, purchase, sale, import and export of leather goods, including footwear, and are leading retailers of footwear and fashion accessories. The Complainant and its affiliated companies have currently more than 3,000 points of sale around the world in over 100 countries and offer their products through the websites “ “ partners’ websites and in physical department stores. One of the Complainant’s brands is “CALL IT SPRING” which consists of lines of shoes, boots, sandals and handbags which are made in 100% vegan way.
The Complainant and its affiliated companies are the owners of the following trademark registrations (“CALL
IT SPRING Trademarks”):
United States Trademark Registration CALL IT SPRING (word) No. 4258094, registered on December 11,
2012;
International Registration CALL IT SPRING (word) No. 1706453, registered on November 1, 2022;
International Registration CALL IT SPRING (word) No. 1109466, registered on February 1, 2023.
In 2023, the Complainant has changed its legal form from a stock corporation under German law (“AG”) to a private limited company under German law (“GmbH”), which is why some trademark registries may still list Aldo Group International AG as the trademark owner. However, by virtue of the mere change in legal form, this is one and the same legal entity.
The Complainant provided a selection of the Complainant’s trademarks and domain names registered worldwide.
The disputed domain name <callitspringecuador.com> was registered on April 16, 2024. The Complainant
had effected the registration for all CALL IT SPRING Trademarks before the disputed domain name was
registered. The Complainant has submitted screenshots of the Respondent’s website under the disputed
domain name which redirects to the content of the domain name <callitspringenecuador.com>. The website
to which the domain name <callitspringenecuador.com> resolves, is offering products branded with the CALL
IT SPRING Trademark such as shoes and bags. The website also uses the CALL IT SPRING logo at the
top of the page, which is identical to the logo used on the Complainant’s official website
“ where it is placed in the identical position.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
page 3
Notably, the Complainant contends that:
The Complainant has produced evidence for its CALL IT SPRING Trademarks which refer to e.g., bags, fashion accessories and footwear.
| its CALL IT SPRING Trademarks. According to the Complainant, the disputed domain name reproduces the | The Complainant claims that the disputed domain name <callitspringecuador.com> is confusingly similar to business under the CALL IT SPRING Trademarks. | |||
| Furthermore, the Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not affiliated in any way with the Complainant and has not been authorized by the Complainant to use its trademarks or seek registration of any domain names incorporating said trademarks. In addition, the Complainant states that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, since the Respondent’s behavior shows clear intent to obtain an unfair commercial gain by creating the false impression, that the website is endorsed by the Complainant. | ||||
| According to the Complainant, the disputed domain name has been registered and used in bad faith. The Respondent had knowledge of the Complainant’s CALL IT SPRING Trademarks, when registering the disputed domain name, since the Respondent is offering products with the Complainant’s logo, name and images on the website to which the disputed domain name redirects. In addition, the Complainant asserts that the Respondent registered and used the disputed domain name with the intention to obtain commercial gain by creating a likelihood of confusion with the Complainant’s registered CALL IT SPRING Trademarks. | ||||
| Against this background, the Complainant requests that the Panel orders the disputed domain name to be transferred to the Complainant. | ||||
| B. Respondent | ||||
| The Respondent did not reply to the Complainant’s contentions. | ||||
| 6. Discussion and Findings | ||||
| According to the Policy, paragraph 4(a), the Complainant must prove each of the following: | ||||
| (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and | ||||
| ||||
| The Panel acknowledges the consensus view − as set forth in paragraph 4.3 of the WIPO Overview of WIPO | ||||
| default to respond to the Complaint does not automatically result in a decision in favor of the Complainant. | ||||
| Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) − that the Respondent’s allegations which are not inherently implausible as being true), the Policy, paragraph 4, requires the Complainant to support its assertions with actual evidence in order to succeed in the UDRP proceeding. In view of the Panel, the Complainant has established sufficient evidence in its favor in the case at hand. |
page 4
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
Although the addition of other terms here, “ecuador”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
In line with previous UDRP decisions, it is sufficient for the Complainant to make a prima facie showing that
the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden
of production of evidence to the Respondent (see OSRAM GmbH. v. Mohammed Rafi/Domain Admin,
Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149; B-Boy TV Ltd v.
bboytv.com c/o Whois Privacy Service / Chief Rocka LTD, formerly named BreakStation LTD., WIPO Case
No. D2012-2006; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285; Skipton
Building Society v. skiptonassetmanagement.com, Private Registration, WIPO Case No. D2011-0222;
Evolution AB v. tom scholes, WIPO Case No. D2023-2030; Canva Pty Ltd v. JOSE VALDIR DE LIMA,
WIPO Case No. D2023-1736; Streamotion Pty Ltd v. Ovi Khan, WIPO Case No. D2022-3784).
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
The disputed domain name redirects to the content of the domain name <callitspringenecuador.com>. The website to which the domain name <callitspringenecuador.com> resolves, is an online shop offering products branded with the CALL IT SPRING Trademark such as shoes and bags. The website also uses the CALL IT SPRING logo at the top of the page, which is identical to the logo used at the Complainant’s official website
page 5
“ where it is placed in the identical position. The online shop’s language is Spanish, therefore, the Panel can assume that this shop is designed to target consumers in the Ecuadorian market. The Respondent is no official reseller, distributor, or other authorized representative of the Complainant.
Hence, the Respondent takes unfair commercial benefit on the repute of the CALL IT SPRING Trademarks
for the Respondent’s own gain. Against this background there are neither indications for a bona fide offering
nor for a noncommercial or fair use of the disputed domain name (see Philip Morris Products S.A. v.
Shahrooz Sadat, GreenHost, WIPO Case No. D2023-2389; Novartis AG v. Wil Smit, WIPO Case No.
D2016-1155).
The addition of the term “ecuador” suggests that the website is operated by the owner of the trademark or an
authorized distributor (see Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287; BHP
Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284; Philip Morris Products S.A. v. Han Ming
(Lin Cheng) / Chenyi Zhao, 瑪爾有限公司, WIPO Case No. D2019-0733; Inter IKEA Systems BV (IISVB) v.
Hosein Bagheri, WIPO Case No. D2016-0432; LEGO Juris A/S v. Simonovi Eood, WIPO Case No.
D2012-0863). The Panel finds that the disputed domain name carries a risk of implied affiliation with the
Complainant. WIPO Overview 3.0, section 2.5.1.
The Respondent has not filed any Response to the Complaint and, therefore, has not alleged any facts or elements to justify rights or legitimate interests in the disputed domain name.
The Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the 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 sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
A registration under bad faith occurs, where the Respondent knew or should have known of the registration and use of the trademark prior to registering the disputed domain name. The CALL IT SPRING Trademarks were registered internationally prior to the registration of the disputed domain name.
The Panel finds that the Respondent must have had knowledge of the registration of the CALL IT SPRING Trademarks prior to the registration of the disputed domain name. The Respondent was selling footwear and fashion accessories not only under the brand CALL IT SPRING, but was also using the Complainant's logo and product images on the websiteThus, it is clear that the Respondent knew of the Complainant’s business and CALL IT SPRING Trademarks at time of registration of the disputed domain name and has registered it in order to take unfair advantage of it. By using the CALL IT SPRING Trademarks, the Respondent tried to use the Complainant’s reputation for the Respondent’s own commercial gain.
According to paragraph 4(b)(iv) of the Policy, bad faith can be assumed when the Respondent uses the disputed domain name to create a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement in order to obtain commercial gain. The Respondent’s use of the Complainant’s CALL IT SPRING Trademarks in the disputed domain name creates a likelihood of confusion. This likelihood of confusion is intensified by using the geographical term “Ecuador” which suggests an affiliation with the Complainant. This likelihood is utilized by the Respondent to mislead Internet users to obtain commercial gain.
page 6
The Panel finds that the Respondent’s use of privacy protection in order to hide his true identity further
constitutes the registration and use in bad faith (see H & M Hennes & Mauritz AB v. Domain Admin, Private
Registrations Aktien Gesellschaft / Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a
PrivacyProtect.org, WIPO Case No. D2017-0491; Compagnie Générale des Etablissements Michelin v.
Balticsea LLC, WIPO Case No. D2017-0308).
The Panel finds that the Complainant has established the third element of 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 <callitspringecuador.com> be transferred to the Complainant.
/Alexander Duisberg/
Alexander Duisberg
Sole Panelist
Date: October 24, 2024
0
0
0