Basic Trademark S.R.L, Basic NET S.p.a v Yhetgb Ojfek, Rhdsj Ojdjsd

WIPO Case No. D2022-2669

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Basic Trademark S.R.L, BASIC NET S.p.a v. Yhetgb Ojfek, Rhdsj Ojdjsd,
Nadine Gruenewald, Martin Saenger, Ute Schwartz, Steffen Vogt,
Dieter Hoffmann, Julia Loewe, Claudia Rothstein, Client Care,
Web Commerce Communications Limited, Domain Admin,
Whoisprotection.cc, Max Vogler, Katja Jaeger, Lucas Lehmann,
Katharina Naumann, Birgit Kalb, Leon Engel, Alexander Rothschild,
Kalb Daniel, Kuhn Maik, Alexander RICHTER, Ralf METZGER,
Brigitte SAENGER, Yaomine EKSTROM, Stephan Kaiser

Case No. D2022-2669

1. The Parties

The Complainants are Basic Trademark S.R.L, Italy, and BASIC NET S.p.a, Italy, represented by

Sindico e Associate., Italy.

The Respondents are Yhetgb Ojfek, Hong Kong, China, Rhdsj Ojdjsd, Hong Kong, China, Nadine
Gruenewald, Germany, Martin Saenger, Germany, Ute Schwartz, Germany, Steffen Vogt, Germany, Dieter
Hoffmann, Germany, Julia Loewe, Germany, Claudia Rothstein, Germany, Client Care, Web Commerce
Communications Limited, Malaysia, Domain Admin, Whoisprotection.cc, Malaysia, Max Vogler, Germany,
Katja Jaeger, Germany, Lucas Lehmann, Germany, Katharina Naumann, Germany, Birgit Kalb, Germany,
Leon Engel, Germany, Alexander Rothschild, Germany, Kalb Daniel, Germany, Kuhn Maik, Germany,
Alexander RICHTER, Germany, Ralf METZGER, Germany, Brigitte SAENGER, Germany, Yaomine

EKSTROM, Germany, and Stephan Kaiser, Germany.

2. The Domain Names and Registrars

No. Disputed Domain Names Registrars

1 supergagr.com

2 supergaonlineshop.com	1API GmbH
3 supergashoessale.com
4 supergaau.com
5 supergabarcelona.com
6 supergabelgie.com
7 supergabr.com	Alibaba.com Singapore E-Commerce Private Limited
8 supergabuty.com 9 supergacipo-outlet.com

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10 supergadanmark.com 11 superga-denmark.com 12 superga-greece.com

13 supergahvitesko.com
14 supergaisrael.com
15 supergaistanbul.com
16 supergaitaliaoutlet.com 17 superga-malaysia.com 18 supergamexico.com
19 superganorge.com
20 supergaonlineschweiz.com
21 supergaoutletargentina.com
22 supergaoutletmadrid.com
23 superga-ph.com
24 supergaphshop.com
25 superga-pl.com
26 supergaroma.com
27 superga-romania.com
28 supergasg.com
29 supergashoesindonesia.com
30 supergashoesmalaysia.com

31 supergashoesnz.com	Alibaba.com Singapore E-Commerce Private Limited
32 supergashoesphilippines.com
33 supergashoesportugal.com
34 supergaskleppolska.com
35 supergasmexico.com
36 supergasneakerscanada.com
37 supergasouthafrica.com
38 supergastockists.com
39 supergastoredeutschland.com
40 supergastoremadrid.com
41 superga-sverige.com
42 supergasverige.com
43 supergatenisky.com
44 supergatokyo.com
45 supergausashoes.com
46 supergawhitecanada.com
47 supergawhiteshoes.com
48 supergawhitesneakers.com
49 superga-za.com
50 superga2750.com
51 tiendassupergachile.com
52 siyahsuperga.com
53 supergaie.com	Mat Bao Corporation
54 supergaschwarz.com
55 storesuperga.com
56 supergasale.com	Name.com, Inc.
57 supergasneakers.com 58 supergaargentina.com 59 supergahungary.com
60 supergasalegreece.com	NameSilo, LLC
61 supergatennarit.com 62 supergauk.com

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63 ucuzsuperga.com	NameSilo, LLC
64 supergamagyarorszag.com
65 supergasalesnz.com
66 supergashoesireland.com	NETIM SARL
67 tiendasupergamadrid.com 68 supergaemportugal.com 69 supergahrvatska.com
Web Commerce Communications Limited dba
70 supergaph.com	WebNic.cc
71 supergashoessingapore.com 72 supergaturkiyemagazalari.com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2022. connection with the disputed domain names. On July 21, 22, 23, 25, and 28, 2022, the Registrars transmitted by email to the Center the verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents (Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”), Whois Agent, Domain Protection Services, Inc., United States) and contact information in the Complaint. The Center sent an email communication to the Complainants on July 28, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 2, 2022. On October 17, 2022, the Complainants requested withdrawal of the Complaint in respect of thirty-two expired disputed domain names.

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 October 20, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2022. On October 20, 2022, the Center received an email communication from one of the Respondents. Accordingly, the Center notified the commencement of panel appointment process on November 10, 2022. On November 17, 2022, the Complainants requested withdrawal of three expired disputed domain names.

The Center appointed John Swinson as the sole panelist in this matter on November 25, 2022. 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 are companies from Italy.

The Complaint contends Basic Trademark S.r.l. is a prominent Italian company and it is part of the BasicNet sportswear or leisurewear.

In this decision, unless otherwise stated, the Panel will use the term “Complainant” to refer to both
Complainants.

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The Complainant owns several trademark registrations for SUPERGA. These include European Union
Trade Mark No. 003181492 for SUPERGA that was filed on May 23, 2003 and with a registration date of

December 10, 2004.

The Complainant uses the SUPERGA trademark in respect of casual footwear.

This dispute concerns 72 disputed domain names and lists over 20 Respondents. The Respondents did not file a formal Response, so little is known about the Respondents.

The disputed domain names were registered on various dates, from May 21, 2019 to March 28, 2022.[1]

[1] The Panel notes that all of the disputed domain names are active at the time of drafting this Decision, however, one disputed domain

At the present time, some of the disputed domain names do not resolve to websites and so do.

The Panel has reviewed all 72 of the disputed domain names and will use four as examples. The others have similarities to the four examples discussed below.

As a first example, the disputed domain name <supergastockists.com> currently resolves to a website that
looks like it could be the Complainant’s website. It includes the Complainant’s logo, displays many of the
Complainant’s shoes, and has functionality that allows consumers to order and pay for the Complainant’s
shoes. The meta-tag description for this website states: “Superga South Africa Sale, Shop From The Latest

And Trendy Collection Of Shoes With Different Style And Colours At Best Price.”

As a second example, the disputed domain name <supergaau.com> resolves to a website that is similar to
the <supergastockists.com> website, but with many of the same elements arranged in a different layout.
The privacy notice on the “supergaau.com” website is the same as the privacy notice on the
“supergastockists.com” website. The meta-tag description for the <supergaau.com> website states:
“Superga Australia Sale Trends That Are Versatile Enough For Every Occasion, Superga 2790 Platform
Shoes Cheap New Product, Superga Sneakers Sale And Free Shipping.”

As a third example, the disputed domain name <ucuzsuperga.com> resolves to a website in the Turkish language that has a very similar look to the above two websites. For example, the privacy notice is in Turkish, but appears to be the same as on the two websites discussed above, and the capitalization mistakes in all three privacy notices are the same. The meta-tag description for the <ucuzsuperga.com> website states: “Ucuz Superga Ayakkabı Nereden Alınır,Birbirinden Şık Superga Ayakkabılara En Iyi Fiyat

Garantisiyle Sahip Olmak Için Hemen Tıklayın!” which approximately translates to “Cheap Superga Shoes,

where can you buy from, each smarter than the other, to get best price guarantee click here!”

As a fourth example, the disputed domain name <tiendasupergamadrid.com> resolves to a website in Spanish that has a very similar look to the Turkish website referred to above. Again, the privacy notice (which is in Spanish, but appears to be the same as on the three websites discussed above) has the same

capitalization mistakes as on the above three websites.

According to the Registrar’s records, these four example disputed domain names are owned as follows:

<supergastockists.com> - Client Care, Web Commerce Communications Limited, Malaysia;

<supergaau.com> - Domain Admin, Whoisprotection.cc, with approximately the same contact details as the

disputed domain name <supergastockists.com>;

<ucuzsuperga.com> - Claudia Rothstein, Germany;

<tiendasupergamadrid.com> - Yaomine EKSTROM, Germany.

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The Respondent Client Care, Web Commerce Communications Limited of Malaysia has been involved many
disputes under the Policy involving shoes which have similar fact patterns to the present case. Examples
include Alpargatas S.A., Alpargatas Europe, S.L.U. v. Quinton Baker, Jovin Lim, Web Commerce
Communications Limited, Client Care, WIPO Case No. D2022-1500 (and the cases cited therein); and C. &
J. Clark International Ltd v. Drescher Karin; Schulze Stefanie; Hoffmann Florian; Name Redacted; Henrik
Tess; Wulf Susanne; Fischer Thorsten; Baier Johanna; benjamin vogt; Baer Barbara; Stephanie Werfel;
David Bader; Web Commerce Communications Limited, Client Care; Whoisprotection.cc, Domain Admin;
Torsten GRUNEWALD; Gabriele ACKERMAN; Uwe Achen; Steffen Schuster; Sven Eisenhauer; Eric
Koehler; Lea Muench; Christina Kuster; ming dian; Manuela Ziegler; matilda allen; Paul Fried; Nataliia
Kuripko; Andreas Kirsch; David Boehm; Markus Schroder; Felix Fuhrmann; Daniel Beyer; Johanna
Barth; Katja Kirsch; Sara Moench; Brigitte Kuester; Yvonne Grunewald; Annett Roth; Uta Weiss; Dennis
Bohm; Katrin Winkel; Sophie Adler; Mike Schweizer; Jens Jager; Torsten Kuhn; Jens Keller; Eric Kuster;
Juliane Fassbinder; Sabrina Furst; Monika Kaufmann; Mike Klug; Andrea Moench; Simone Luft; Kerstin
Eichelberger; Doreen Koch; Marcel Ebersbach; Dieter Hahn; Alexander Schneider; Michelle Baier;
Florian Weber; Lena Duerr; Mike Braun; Kevin Eisenhauer; Maria Schaefer; Anna Frey; Maik Wulf, WIPO

Case No. D2022-0817 (and the cases cited therein).

5. Parties’ Contentions

A. Complainant

In summary, the Complainant makes the following submissions:

The Complainant is the holder of several trademarks worldwide protecting SUPERGA in classes 3, 9, 14, 16,

18, and 25.

The SUPERGA trademarks have been used extensively in Europe and all over the world. At least in Europe,
SUPERGA is one of the most famous brands in the sector of casual footwear.

The Complainant has high turnover through its e-commerce channels and sales made on its official website at “

The disputed domain names are all confusingly similar to the trademark SUPERGA as they all fully include the SUPERGA trademark. Most of the disputed domains contain the SUPERGA trademark coupled with geographical terms.

The trademark SUPERGA is clearly recognizable in the disputed domain names and it is the only distinctive element; all other elements (geographical terms, terms with clear reference to the product or to sales activity or colors) are devoid of any distinctive character.

The Complainant has never authorized any third party to register any domain names including the trademark
SUPERGA.

As a result of the fame and distinctiveness of the trademark SUPERGA all over the world, the registration of the disputed domain names qualifies as being made in bad faith per se.

The Respondents’ primary purpose in registering and maintaining the disputed domain names has always been abusive. By using the disputed domain names, the Respondents intentionally attempted to attract for commercial gain, Internet users to the Respondents’ websites, by creating a likelihood of confusion with the Complainant’s trademark.

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B. Respondent

The Respondents did not formal reply to the Complainant’s contentions. However, the Center received an email communication from the Respondent Client Care, Web Commerce Communications Limited, stating “We have notified the respective parties to investigate this issue and take the necessary action”.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the

Policy have been satisfied, namely:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The onus of proving these elements is on the Complainant.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.

6.1 Preliminary Issue: Consolidation

The Complainant requests the consolidation of the proceedings in respect of the disputed domain names, maintaining that they are under common control because the websites to which the disputed domain names resolve are the same or very similar, the naming structure of the disputed domain names are the same or similar (e.g. superga + descriptive term + country, or superga + country) and the disputed domain names have all been registered within a short period of time (and often in groups).

Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and paragraph 3(c) of 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. Where a complaint is filed against

multiple respondents, UDRP panels typically will look at whether the domain names or corresponding
websites are subject to common control, and whether the consolidation would be fair and equitable to all
parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

The Center has discharged its duties to notify the persons listed as registrants of the disputed domain names. None of the listed registrants of the disputed domain names has submitted a formal Response or objected to the consolidation request of the Complainant.

The Respondents have not advanced any reasons why it may not be equitable to allow the consolidation of the disputes, nor have they denied that the disputed domain names are not under common control. Consolidation would lead to greater procedural efficiency, and the Panel is not aware of any reasons why the consolidation would not be fair and equitable to all parties.

The Panel has also reviewed prior decisions involving the same Respondents (including those cited above in section 4). The fact patterns on those cases are very similar to the present case. In those cases, consolidation was considered appropriate.

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The above satisfies the Panel that the consolidation of the Respondents and the disputes related to the disputed domain names in a single proceeding is justified and appropriate in the circumstances.

Therefore, the Panel decides to allow the consolidation of the disputes in relation to all of the disputed domain names in the present proceeding.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

As set out above, the Complainant owns trademark registrations for the SUPERGA trademark.

The Panel considers that on a side-by-side comparison, the disputed domain names are confusingly similar to the Complainant’s SUPERGA trademark.

The disputed domain names include the entirety of the trademark SUPERGA, and add a geographical term or terms related to the sale of the Complainant’s products (such as “store”, “shoes”, “sneakers” or “sale”, or non-English words with similar relevant meanings).

When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish
confusing similarity for purposes of the Policy. Cox Enterprises, Inc. v. Miguel Delsel, WIPO Case No.

D2020-2676.

The addition of terms in the disputed domain names does not prevent a finding of confusing similarity
between the disputed domain names and the Complainant’s trademark under the Policy. See also
Alpargatas S.A., Alpargatas Europe, S.L.U v. Sabrina Diederich / Web Commerce Communications Limited,

WIPO Case No. D2022-0942 (the “Diederich case”).

The Complainant succeeds on the first element of the Policy in relation to the disputed domain names.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable
preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in

connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) has been commonly known by the

[disputed] domain name, even if [the respondent] has acquired no trademark or service mark rights; or

(iii) [the respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at
issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

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The onus of proving this requirement, like each element, falls on the Complainant.

Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.

The Complainant asserts that the Complainant has never authorized any third party to register any domain names including the trademark SUPERGA.

Prior UDRP panels have held that the use of a domain name like the disputed domain names here, attempting to attract Internet users through misuse of a well-known trademark, and the provision of content which promote goods and services impersonating and competitive to the complainant cannot be considered use in connection with a bona fide offering of goods or services under Paragraph 4(c)(i). See The Clorox Company v. WhoisGuard Protected, WhoisGuard, Inc. / Enos Villanueva, Melissa Rosenberg, Yang Ming, WIPO Case No. D2021-0603.

Several of the disputed domain names are currently inactive, but they reflect the same naming pattern and are under common control. Therefore, without any plausible explanation for their registration, they appear as part of an attempt to “corner the market” in domain names that reflect the SUPERGA trademark. See the Diederich case, supra.

The Panel finds that the Respondents have failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. None of the circumstances listed in paragraph 4(c) apply in the present circumstances. Accordingly, the Panel finds the Respondents have not established rights or any legitimate interests in the disputed domain names.

The Complainant succeeds on the second element of the Policy in relation to the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondents have registered and used the disputed domain name in bad faith.

In the present circumstances, the Panel concludes that the registration and use of the disputed domain names are in bad faith.

The Respondents’ conduct demonstrates the Respondents’ knowledge of the Complainant and its trademark. By registering many domain names that include the Complainant’s well-known trademark, and then by using the disputed domain names to impersonate the Complainant, demonstrates that the Respondents specifically knew of and targeted the Complainant.

New Balance Athletics, Inc. v. Client Care, Web Commerce Communications Limited, WIPO Case No. D2022-0908 where a similar finding was made.

On multiple occasions in 2021 and 2022 alone, some of the Respondents or the controlling mind of the domain names, constitutes further evidence of bad faith. See also

Respondents have been found by UDRP panels to have engaged in abusive domain name registrations.

The current status of some of the disputed domain names (not resolving to an active website) does not
prevent a finding of bad faith, given the Respondents’ failure to participate in this proceeding, and the
Respondents’ attempt to corner the market (as discussed above) in respect of domain names involving the
SUPERGA trademark. See section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”).

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Based on the facts in the Complaint, which the Respondents do not rebut, the Panel finds that both paragraphs 4(b)(ii) and (iv) of the Policy apply in the present case.

The Complainant succeeds on the third element of the Policy in relation to the disputed domain names.

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 names, <siyahsuperga.com>, <storesuperga.com>,
<supergaargentina.com>, <supergaau.com>, <supergabarcelona.com>, <supergabelgie.com>,
<supergabr.com>, <supergabuty.com>, <supergacipo-outlet.com>, <supergadanmark.com>, <superga-
denmark.com>, <supergaemportugal.com>, <supergagr.com>, <superga-greece.com>,
<supergahrvatska.com>, <supergahungary.com>, <supergahvitesko.com>, <supergaie.com>,
<supergaisrael.com>, <supergaistanbul.com>, <supergaitaliaoutlet.com>, <supergamagyarorszag.com>,
<superga-malaysia.com>, <supergamexico.com>, <superganorge.com>, <supergaonlineschweiz.com>,
<supergaonlineshop.com>, <supergaoutletargentina.com>, <supergaoutletmadrid.com>, <superga-ph.com>,
<supergaph.com>, <supergaphshop.com>, <superga-pl.com>, <supergaroma.com>, <superga-
romania.com>, <supergasale.com>, <supergasalegreece.com>, <supergasalesnz.com>,
<supergaschwarz.com>, <supergasg.com>, <supergashoesindonesia.com>, <supergashoesireland.com>,
<supergashoesmalaysia.com>, <supergashoesnz.com>, <supergashoesphilippines.com>,
<supergashoesportugal.com>, <supergashoessale.com>, <supergashoessingapore.com>,
<supergaskleppolska.com>, <supergasmexico.com>, <supergasneakerscanada.com>,
<supergasneakers.com>, <supergasouthafrica.com>, <supergastockists.com>,
<supergastoredeutschland.com>, <supergastoremadrid.com>, <superga-sverige.com>,
<supergasverige.com>, <supergatenisky.com>, <supergatennarit.com>, <supergatokyo.com>,
<supergaturkiyemagazalari.com>, <supergauk.com>, <supergausashoes.com>,
<supergawhitecanada.com>, <supergawhiteshoes.com>, <supergawhitesneakers.com>, <superga-za.com>,
<superga2750.com>, <tiendassupergachile.com>, <tiendasupergamadrid.com>, and <ucuzsuperga.com>,

be transferred to the Complainant.

/John Swinson/
John Swinson
Sole Panelist
Date: December 9, 2022

name, <supergaschwarz.com>, is currently pendingDelete.