Jason Rice, Client Care, Web Commerce Communications Limited, Joseph Graham, ZhouRunFa

WIPO Case No. D2023-3558

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

On AG and On Clouds GmbH v. Kasper Skovse, leenhan (주식회사 리앤한),

Lukas Osterhagen, Kristin Ritter, Baochunbin (宝春斌), Chenjun (陈军),

Jason Rice, Client Care, Web Commerce Communications Limited,
Joseph Graham, ZhouRunFa

Case No. D2023-3558

1. The Parties

The Complainants are On AG, Switzerland, and On Clouds GmbH, Switzerland, represented by Rentsch &

Partner, Switzerland.

The Respondents are Kasper Skovse, Germany, leenhan (주식회사 리앤한), Republic of Korea, Lukas

Osterhagen, Germany, Kristin Ritter, Germany, Baochunbin (宝春斌), China, Chenjun (陈军), China, Jason

Rice, United States of America (“USA”), Client Care, Web Commerce Communications Limited, Malaysia,

Joseph Graham, USA, ZhouRunFa, China.

2. The Domain Names and Registrars

The disputed domain names <oncloud-ayakkab.com>, <oncloudayakkab.com>,
<oncloudmonsterdublin.com>, <oncloudmonsterfinland.com>, <oncloudmonster-nz.com>,
<oncloudmonsteroslo.com>, <oncloudmonster-romania.com>, <oncloudshoesgreece.com>,
<oncloudsveriges.com>, <oncloudxfactoryoutlets.com>, <oncloudxoutletmall.com>,
<onrunningayakkabiturkey.com>, <onrunningfactoryoutletshop.com>, <onrunning-greece.com>,
<onrunninginargentina.com>, <onrunningnederlandoutlet.com>, <onrunningoutletfactory.com>,

<onrunningsalecanada.com>, <onrunsshoes.com> are registered with Alibaba.com Singapore E-Commerce

Private Limited (the “Registrar”).

The disputed domain name <oncloudsverige.com> is registered with Key-Systems GmbH (the “Registrar”).

The disputed domain name <onrunkorea.com> is registered with Gabia, Inc. (the “Registrar”).

The disputed domain name <onrunninggroutlet.com> is registered with Hosting Concepts B.V. d/b/a

Registrar.eu. (the “Registrar”).

The disputed domain name <onrunningromaniai.ro> is registered with ROTLD (the “Registrar”).

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The disputed domain names <onrunning-shoes.com> and <onshoes.net> are registered with Xiamen

ChinaSource Internet Service Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on

August 23, 2023. On August 24, 2023, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 25, 2023, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on August 25, 2023 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 in English on August 28, 2023.

On August 25, 2023, the Center informed the parties in Korean, Chinese and English, that the language of the registration agreement for the disputed domain name <onrunkorea.com> is Korean, and that the language of the registration agreement for the disputed domain names <onrunning-shoes.com> and <onshoes.net> is Chinese. On August 28, 2023, the Complainants requested English to be the language of

the proceeding. The Respondents did not submit any comment on the Complainants’ submission.

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 Respondents in Korean, with the Rules, paragraph 5, the due date for Response was September 20, 2023. The Respondents did not

submit any formal response. The Center received an email from the Respondent leenhan (주식회사 리앤한)

on September 6, 2023. On September 22, 2023, the Center informed the Parties that it would proceed to

panel appointment.

Between August 25, 2023 and August 28, 2023, the Center informed the Parties about the expiration of the between the Complainant and the Registrars, all of the above-mentioned disputed domain names may not have been renewed by the Parties. In this regard, the corresponding Registrars confirmed that some of the disputed domain names may have already been deleted or will shortly be deleted.

disputed domain names <onshoes.net>, <onrunkorea.com>, <onrunningromaniai.ro>,
<onrunninggroutlet.com>, <onrunning-greece.com>, <onrunninginargentina.com> <onrunsshoes.com>
<onrunningfactoryoutletshop.com> <onrunningsalecanada.com> <oncloud-ayakkab.com>,
<onrunningayakkabiturkey.com> <oncloudmonster-nz.com>, <oncloudmonster-romania.com>,
<oncloudmonsterfinland.com>, <oncloudmonsteroslo.com>, <oncloudmonsterdublin.com>, and invited the
The Center appointed Moonchul Chang as the sole panelist in this matter on October 24, 2023. 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.

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4. Factual Background

The Complainants are well-established providers of sports apparel and shoes, in particular running shoes, which can be bought at over 6500 premium retail stores in over 50 countries or online through the

Complainants’ website operating under the domain name <on-running.com>. In addition to its European

headquarters in Zurich, in Switzerland, the Complainants have offices in the USA, Canada, Japan, Australia,
Germany, Brazil, China and Viet Nam.

The Complainants own among other the following trademarks:

International Trademark No. 1050016 - ON, registered April 21, 2010,
International Trademark No. 1185372 - ON RUNNING, registered October 25, 2013,
International Trademark No. 1361124 - CLOUD, registered May 4, 2017,
International Trademark No. 1690468 - ON CLOUD SHOES, registered August 19, 2022,
International Trademark No. 1690464 - ON SHOES, registered August 19, 2022,
International Trademark No. 1690465 - CLOUD SHOES, registered August 19, 2022,
International Trademark No. 1503051 - ON (logo), registered September 24, 2019,
International Trademark No. 1258068 - RUN ON CLOUDS., registered May 22, 2015,
International Trademark No. 1369343 - CLOUD X, registered August 21, 2017,

International Trademark No. 1647337 - CLOUDMONSTER, registered October 5, 2021.

The Respondents own the following the disputed domain names.

Disputed domain names	Date of	Registrar
Registration
1) oncloudxoutletmall.com	2022-08-05	Alibaba.com
2) onrunningoutletfactory.com	2022-02-16	Singapore
3) oncloudxfactoryoutlets.com	2022-05-14	E-Commerce Private Limited
4) oncloudshoesgreece.com	2023-03-23
5) onrunning-greece.com	2022-10-09
6) onrunninginargentina.com	2022-09-23
7) onrunningromaniai.ro	2022-09-13	ROTLD
8) onrunning-shoes.com	2022-07-05	Xiamen ChinaSource
Internet Service
9) onrunkorea.com	2021-07-27	Gabia
10) oncloudsverige.com	2021-07-05	Key-Systems GmbH
11) oncloudsveriges.com	2023-04-14	Alibaba.com
12) onrunningnederlandoutlet.com	2022-05-18	Singapore E-Commerce
Private Limited
13) onrunninggroutlet.com	2022-09-23	Hosting Concepts B.V
14) onrunsshoes.com	2022-10-27
15) onrunningfactoryoutletshop.com	2022-10-11	Alibaba.com
16) onrunningsalecanada.com	2022-10-21	Singapore
17) oncloudayakkab.com	2022-07-18	E-Commerce Private Limited
18) oncloud-ayakkab.com	2022-11-17
19) onrunningayakkabiturkey.com	2022-10-20
20) onshoes.net	2022-09-18	Xiamen ChinaSource
Internet Service
21) oncloudmonster-nz.com	2022-10-18	Alibaba.com
22) oncloudmonster-romania.com	2022-10-18	Singapore
23) oncloudmonsterfinland.com	2022-10-18	E-Commerce
24) oncloudmonsteroslo.com	2022-10-18	Private Limited
25) oncloudmonsterdublin.com	2022-10-18

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5. Parties’ Contentions

A. Complainants

The Complainants assert that they have established all three elements required under paragraph 4(a) of the

Policy for a transfer of the disputed domain names.

B. Respondents

The Respondents did not formally reply to the Complainants’ contentions. However, on September 6, 2023,

the Center received an informal communication from one of the Respondents stating that a third party is

currently in charge of the disputed domain name <onrunkorea.com>.

6. Discussion and Findings

6.1. Preliminary Issue:

A. Consolidation of Multiple Respondents

The Panel has considered the possible consolidation of the Complaint for the disputed domain names at issue. According to section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”), “where a complaint is filed against multiple respondents,

panels look at whether (i) the domain names or corresponding websites are subject to common control, and

(ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin

panel consideration of such a consolidation scenario”.

The Panel notes the following factors of the disputed domain names and arguments submitted by the Complainants in favor of the consolidation: (i) The Complainants show that the websites under the 25 disputed domain names are essentially identical, which indicates that all of these websites are controlled by

the same person; (ii) all of disputed domain names went under privacy and proxy during the similar period of

2021-2023; (iii) all disputed domain names target the Complainants’ trademark.

In consideration of all the above the Panel notes that, as the Complainants have argued, there appears
prima facie to be one single Respondent. Furthermore, the Respondents did not submit any arguments to
rebut this inference. The Panel finds therefore that consolidation is fair to both Parties, as the Respondents

have been given an opportunity to object to consolidation through the submission of their Response but have

chosen not to do that. Therefore, the Panel will refer hereafter to the Respondents as “the Respondent”.

B. Language of Proceedings

According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel determines otherwise or is otherwise agreed to by the Parties. In the present case, the Registrars confirmed that the language of the registration agreement for the

disputed domain name <onrunkorea.com> is Korean and those for the disputed domain names <onrunning-
shoes.com> and <onshoes.net> are Chinese.

However, the Complaint was filed in English. The Complainants request for English to be the language of the administrative proceedings for the following reasons: (i) all 25 disputed domain names are all under common control, as they are essentially identical; (ii) the consolidation of the complaint in the same language, namely English, would be fair and equitable to all parties as well as efficient, given that pure fake webshops are operated under the disputed domain names; (iii) the three fake webshops operated under the disputed domain names are all in English; (iv) the Respondents are therefore very familiar with the requested language English. On the other hand, the Respondents did not respond to the Complaint.

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Here, the Panel observes that the Center, for its part, has notified the Respondents of the Complaint in

English, Chinese and Korean. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of

the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with

each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations

are required, and other relevant factors.

In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel

concludes, in view of all of the above, that it will accept the Complaint as filed in English and that it is

appropriate to render this Decision in English.

C. Identity of Respondent

The Panel notes that the paragraph 1 of the UDRP Rules provides that the respondent is “the holder of a

domain name registration against which a complaint is initiated”. In addition, the paragraph 4(b) of the

UDRP Rules provides that any updates to the Respondent’s data must be made before the two (2) business

day period concludes or before the Registrar verifies the information requested and confirms the Lock to the irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed. Section 4.4.5 of WIPO Overview 3.0. In the present case involving a privacy or proxy registration service initially named as the Respondent, on receipt from the registrar of information relating to an underlying or beneficial registrant the Center provided the disclosed underlying registrant information to the Complainant and the Complainant amended the Complaint to reflect such information. In this circumstance, and following the communication received on September 6, 2023, stating that a third party is currently in charge of the disputed domain name <onrunkorea.com>, the Panel

considers that irrespective of any modifications of the Respondent’s data following the two (2) business day

period the Respondent is the holder of a domain name registration against which the Complaint is initiated in

the present case.

6.2. Substantive Issues

Dealing with the Respondent’s failure to submit a substantive response to the Complaint, paragraph 14(b) of

the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a
provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this
omission as it considers appropriate.

Under paragraph 4(a) of the Policy, the Complainants must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i)        the disputed domain names are identical or confusingly similar to the Complainants’ trademark or

service mark; and

(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.

A. Identical or Confusingly Similar

Each of the disputed domain names includes the Complainants’ trademarks either ON, ON RUNNING,

CLOUD, ON CLOUD, ON SHOES, CLOUD SHOES, RUN ON SHOES, CLOUD X or CLOUDMONSTER

with addition of descriptive or geographic word. The Panel’s assessment of identity or confusing similarity

involves a straightforward comparison between the disputed domain name and the textual components of

the relevant mark. Adding such term does not prevent a finding of confusing similarity and does not change

the overall impression of the disputed domain name as being confusingly similar to the Complainant’s

trademark. Section 1.8 of the WIPO Overview 3.0. Numerous UDRP panels have held that where a domain

name incorporates a complainant’s trademark in its entirety, or where at least a dominant feature of the

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relevant mark is recognizable in the domain name, it is sufficient to consider the domain name “confusingly

similar” to that mark within the meaning of the Policy. Section 1.7 of WIPO Overview 3.0. In addition, the

generic Top-Level Domain (“gTLD”) “.com” or “.net” or the country code Top-Level Domain (“ccTLD”) “.ro” is

disregarded under the confusing similarity test. Section 1.11.1, WIPO Overview 3.0.

Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the

Complainants.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the
Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the
disputed domain name, the burden of production of evidence shifts to the Respondent. Section 2.1 of

WIPO Overview 3.0.

Firstly, the Complainants contend that the Respondents do not have any bona fide interest to use the
disputed domain names. The disputed domain names were registered recently during the period of
2021-2023, whereas the trademarks of the Complainants are well known and have long been protected.

Further, all the Respondents did not reply to the Complaint. Secondly, the Complainants contend that the

Respondent was copying of the Complainants’ website on its fake website and its use of the Complainants’

Marks and logo throughout its website. Here, the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate its rights or legitimate interests in the disputed domain names

to rebut the Complainants’ prima facie case. Further, there is no evidence presented to the Panel that the

Respondent has used, or has made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain names. Thirdly, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain names. In the consideration of the above circumstances the Panel finds that the Complainants have made out a prima facie case and the Respondents failed to come forward

with any appropriate evidence that might rebut the Complainants’ prima facie case.

Accordingly, the Panel concludes that the Complainants have satisfied the second element under paragraph 4(a) of the Policy in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being

used in bad faith”. Thus, for the Complaint to succeed, a UDRP Panel must be satisfied that a domain name

has been registered and is being used in bad faith. These requirements are conjunctive; each must be proven or the Complaint fails. In this proceeding, the Panel needs look no further than the Complaint to determine that the Complainants have established that the Respondent registered and has used the

disputed domain names in bad faith.

First, the Complainants obtained the registration of the International Trademarks much earlier than the

Respondents registered the disputed domain names. Having considered that the Complainants’ trademarks

are internationally well known, it is highly likely that the Respondents have been aware of the reputation of

the Complainants’ Marks when registering a confusingly similar domain name that full incorporates the Complainants’ mark plus the geographical or descriptive term. Thus, it is considered bad faith that the

Respondents deliberately chose the disputed domain names to create a likelihood of confusion with the

Complainants’ trademark so as to create a false association or affiliation with the Complainants.

Secondly, the Complainants contend that each of all disputed domain names resolves to the same fake

website which copies the Complainants’ original online shop on the website <on-running.com>. In addition,

the online shops contain the Complainants’ logo which logo protected as International Registration

No. 1503051. Thus, the 25 fake online shops impersonate the Complainants by using their name and logo.

Further, the same fake online shops were appeared in the previous UDRP cases On AG and On Clouds

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GmbH, c/o On AG v. Stefan Neumann, Patrick Kalb, Lukas Ziegler, Katja Eberhardt; Mathias Hartman /
Domain Administrator; Bettina Presser / Domain Admin, Privacy Protect LLC; Johanna Koehler / Domain

Administrator; Mitja Schmidt / Domain Administrator; Helle Mynster / Domain Administrator; Tonnis

Wolthuis / Domain Administrator, WIPO Case No. D2020-2943. On AG and On Clouds GmbH v. Domain

Admin, Whoisprotection.cc / Kerstin Frankfurter / Name Redacted / Name Redacted / Name Redacted /

Casey Williams / Name Redacted, WIPO Case No. D2021-0925, On AG, On Clouds GmbH v. Web

Commerce Communications Limited, Domain Admin, Whoisprotection.cc / Christin Schmidt, Sandra

Naumann, Jana Papst, WIPO Case No. D2021-2263, On AG, On Clouds GmbH v. Domain Admin,

Whoisprotection.cc, Client Care, Web Commerce Communications Limited, Barbara Gaertner, Katja

Sommer, Marina Abend, and Name Redacted, WIPO Case No. D2021-2861 and On AG and On Clouds

GmbH v. Domain Administrator, See PrivacyGuardian.org/ Mike Kalb, Tobias Bader, Sandra Wurfel, Kristian

Mauer, Mathias Schultheiss, Lauren Duirs; Domain Admin, Whoisprotection.cc/ Leah Hahn; Web

Commerce Communications Limited, Client Care and Whoisprotection.cc, Domain Admin, WIPO Case No.
D2021-4340 with similar domain names.

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. Section 3.1 of the WIPO Overview 3.0. Here, given the totality of

the circumstances, particularly the use of the disputed domain names to apparently impersonate the

Complainants’ website, the Respondent’s lack of participation in the proceeding, and the Respondent’s use

of a privacy and proxy service to mask its details on the publicly available WhoIs, the Panel considers that the Respondents use the disputed domain names in bad faith. Accordingly, the Panel concludes that the Complainants have satisfied the third element under paragraph 4(a) of the Policy in the present case.

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 <oncloud-ayakkab.com>, <oncloudayakkab.com>,
<oncloudmonsterdublin.com>, <oncloudmonsterfinland.com>, <oncloudmonster-nz.com>,
<oncloudmonsteroslo.com>, <oncloudmonster-romania.com>, <oncloudshoesgreece.com>,
<oncloudsverige.com>, <oncloudsveriges.com>, <oncloudxfactoryoutlets.com>, <oncloudxoutletmall.com>,
<onrunkorea.com>, <onrunningayakkabiturkey.com>, <onrunningfactoryoutletshop.com>,
<onrunning-greece.com>, <onrunninggroutlet.com>, <onrunninginargentina.com>,
<onrunningnederlandoutlet.com>, <onrunningoutletfactory.com>, <onrunningromaniai.ro>,
<onrunningsalecanada.com>, <onrunning-shoes.com>, <onrunsshoes.com>, <onshoes.net> be transferred

to the Complainants.[1]

[1] The Panel notes that the status of some of the disputed domain names is not clear. It may be that some of the disputed domain

/Moonchul Chang/

Moonchul Chang

Sole Panelist
Date: November 16, 2023

names were not renewed by the Parties. The Panel notes that the implementation of this decision is a matter for the relevant
Registrars.