Urban Armor Gear, LLC v Torsten Abendroth, Lisa Meyer, uwe maur
WIPO Case No. D2024-4338
•17-12-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Urban Armor Gear, LLC v. Torsten Abendroth, Lisa Meyer, uwe maur,
Khalid Filip, Domain Admin, Privacy Protect LLC PrivacyProtect org,
Marko Reiniger, Marcel Loewe, Schultz Stefanie, Stefanie Schultz, Christian
Brauer, SebastianSchreiber, Markus Frey, Andrea Ziegler, Sandstrom Filip,
Austerlitz Gabriele, Sven Maier, Brigitte Hueber, Jennifer Reiniger,
Niklas Pfeifer and Anne Propst
Case No. D2024-4338
1. The Parties
The Complainant is Urban Armor Gear, LLC, United States of America (“United States”), represented by
Neal, Gerber & Eisenberg LLP, United States.
The Respondents are Torsten Abendroth, Lisa Meyer, uwe maur, Khalid Filip, Marko Reiniger,
Marcel Loewe, Schultz Stefanie, Stefanie Schultz, Christian Brauer, SebastianSchreiber, Markus Frey,
Andrea Ziegler, Sandstrom Filip, Austerlitz Gabriele, Sven Maier, Brigitte Hueber, Jennifer Reiniger, Niklas
Pfeifer and Anne Propst, Germany; Domain Admin, Privacy Protect LLC PrivacyProtect org, United States.
2. The Domain Names and Registrars
The disputed domain names <uag-malaysia.com>, <uagnorge.com>, <uagdanmark.com>, and
<uagcasethailand.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The disputed domain names <uagaustralia.com>, <uagitalia.com>, and <uagsuomi.com> are registered with
Hosting Concepts B.V. d/b/a Registrar.eu (the “Registrar”).
The disputed domain name <uagdeutschland.com> is registered with CNOBIN Information Technology
Limited (the “Registrar”).
The disputed domain names <uagbelgie.com>, <uagnederland.com>, <uagphilippines.com>, and
<uagsingapore.com> are registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
The disputed domain names <uagpolska.com> and <uagschweiz.com> are registered with GMO Internet,
Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
The disputed domain names <uagcanada.com>, <uagcasesuk.com>, <uagfrance.com>, <uaggreece.com>,
<uagireland.com>, and <uagromania.com> are registered with Dynadot Inc (the “Registrar”).
page 2
The disputed domain names <uagchile.com>, <uagslovakia.com>, and <uaguae.com> are registered with
Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
The disputed domain names <uagcolombia.com>, <uagksa.com>, and <uagportugal.com> are registered with NameSilo, LLC (the “Registrar”).
The disputed domain names <uagespana.com> and <uagindonesia.com> are registered with 1API GmbH
(the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2024. connection with the disputed domain names.
On October 22, 23, 24 and 25, 2024 the Registrars transmitted by email to the Center its verification
response disclosing registrants and contact information for the disputed domain names which differed from
the named Respondents (PDR Ltd. d/b/a PublicDomainRegistry.com, Web Commerce Communications Pte.
Ltd. d/b/a WebNIC, Hosting Concepts B.V. d/b/a Registrar.eu, Gransy S.R.O. d/b/a Subreg.cz, Privacy
Protect LLC, Super Privacy Service LTD c/o Dynadot, NameSilo LLC, 1API GmbH, Key-Systems GmbH and
CNOBIN Technology HK, Ltd.) and contact information in the Complaint.
The Center sent an email communication to the Complainant on October 25, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaints for the disputed domain names associated with different
underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on October 31, 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the
Complaint, and the proceedings commenced on November 1, 2024. In accordance with the Rules,
paragraph 5, the due date for Response was November 21, 2024. A Response was filed with the Center on
November 14, 2024, for the disputed domain name <uagnordic.com>.
On December 11, 2024, the Center sent a communication to the Parties confirming the partial dismissal of the proceedings regarding the domain name <uagnordic.com>.
The Center appointed Edoardo Fano as the sole panelist in this matter on December 13, 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.
The Panel has not received any requests from the Complainant or the Respondents regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the means calculated to achieve actual notice to [the] Respondent”. Therefore, the Panel shall issue its Decision
page 3
based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a
response from the Respondents.
The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Urban Armor Gear, LLC, a United States company operating in the field of electronics accessories, and owning several trademark registrations for UAG, among which the following ones:
| - | International Trademark Registration No. 1137924 for UAG (figurative), registered on October 6, 2012; |
| - | European Union Trade Mark No. 015544091 for UAG (figurative), registered on October 4, 2016; |
| - | United States Registration No. 4218930 for UAG (figurative), registered on October 2, 2012. |
The Complainant also operates on the Internet, being <urbanarmorgear.com> its primary domain name
and owning several country-specific domain name registrations and websites, including
“de.urbanarmorgear.com” for Germany.
The Complainant has provided evidence in support of the above.
According to the WhoIs records, the disputed domain names were registered on the following dates:
<uag-malaysia.com>, <uaguae.com>, <uagsuomi.com>, <uagslovakia.com>, <uagsingapore.com>,
<uagschweiz.com>, <uagromania.com>, <uagportugal.com>, <uagphilippines.com>, <uagpolska.com>,
<uagnorge.com>, <uagnederland.com>, <uagitalia.com>, <uagireland.com>, <uagindonesia.com>,
<uaggreece.com>, <uagfrance.com>, <uagespana.com>, <uagcanada.com>, <uagchile.com>,
<uagksa.com>, <uagdanmark.com>, <uagaustralia.com>, <uagbelgie.com>, <uagcolombia.com>,
<uagdeutschland.com>, and <uagcasethailand.com> on August 7, 2024; and, <uagcasesuk.com> on
August 14, 2024. All the disputed domain names resolve to inactive websites, with a majority indicating
“Sorry, you have been blocked[.] You are unable to access […]”.
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 names.
Notably, the Complainant states that the disputed domain names are confusingly similar to its trademark UAG.
Further to section 6.1 below, the Complainant argues that the disputed domain names are under common
control and thus addresses the Respondents in the singular. The Complainant asserts that the Respondent
has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized
by the Complainant to register the disputed domain names or to use its trademark within the disputed
domain names, it is not commonly known by the disputed domain names, and it is not making either a bona
fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
All the disputed domain names are inactive, which is suggestive of bad faith in the circumstances.
The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since
the Complainant’s trademark UAG is well known in the electronics accessories field. Therefore, the
Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain names
page 4
and the Complainant contends that the disputed domain names are likely intended to redirect consumer
traffic from the Complainant’s website and/or conduct phishing schemes, which qualifies as bad faith
registration and use.
B. Respondents
The Respondents have made no reply to the Complainant’s contentions and are in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 4.3.
6. Discussion and Findings
6.1. Procedural issue - Consolidation of Multiple Respondents
The amended Complaint was filed in relation to nominally different domain name registrants. other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.
The disputed domain name registrants did not comment on the Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. WIPO Overview 3.0, section 4.11.2.
As regards common control, the Complainant asserts that inter alia:
- all the disputed domain names follow a very similar naming pattern and the majority of them resolves to
identical landing pages;
- all the disputed domain names have been registered within a very short period of time, namely 27 out of 28
on August 7, 2024 and the other one on August 14, 2024;
- all the Respondents, except Domain Admin, Privacy Protect LLC PrivacyProtect org (a privacy service), are
located in Germany and have suspect registration details.
Considering the above and in the absence of any objection from the Respondents regarding the unfair or inequitable to any Party in terms of fairness and equity.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.
page 5
6.2. Substantive Issues
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain names are identical 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 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
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 names. WIPO Overview 3.0, section 1.7.
Based on the available record, the Panel finds 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 Panel finds the entirety of the Complainant’s mark is reproduced within the disputed domain names.
Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.
While the addition of other terms, here “malaysia”, “uae”, “suomi”, slovakia”, “singapore”, “schweiz”,
“romania”, “portugal”, “philippines”, “polska”, “norge”, “nederland”, “italia”, “ireland”, “indonesia”, “greece”,
“france”, “espana”, “canada”, “chile”, “ksa”, “danmark”, “australia”, “belgie”, “colombia”, “deutschland”,
“thailand”, “uk”, “case”, “cases”, may bear on assessment of the second and third elements, the Panel finds
the addition of such terms does not prevent a finding of confusing similarity between the disputed domain
names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, is typically ignored
when assessing the similarity between a trademark and a domain name. WIPO Overview 3.0,
section 1.11.1.
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.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have
recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the
often impossible 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
names. 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.
Having reviewed the present record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. 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 names such as those enumerated in the Policy or otherwise.
page 6
All the disputed domain names resolve to inactive websites.
Moreover, the Panel finds that the composition of the disputed domain names, noting in particular the dominant position and exact incorporation of the Complainant’s trademark followed by geographic and/or descriptive terms related to the Complainant’s primary goods, carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1.
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.
In the present case, regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark UAG in the electronics accessories field is clearly established, and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the confusingly similar disputed domain names.
Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the reputation of the Complainant’s trademark, and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the disputed domain names
does not prevent a finding of bad faith under the Policy.
Furthermore, the Panel considers that the nature of the inherently misleading disputed domain names, which
include the Complainant’s trademark UAG in its entirety with the mere addition of the geographical terms
“malaysia”, “uae”, “suomi”, slovakia”, “singapore”, “schweiz”, “romania”, “portugal”, “philippines”, “polska”,
“norge”, “nederland”, “italia”, “ireland”, “indonesia”, “greece”, “france”, “espana”, “canada”, “chile”, “ksa”,
“danmark”, “australia”, “belgie”, “colombia”, “deutschland”, “thailand”, “uk”, and of the terms “case” and
“cases” (relating to the Complainant’s primary goods), further supports a finding of bad faith. WIPO
Overview 3.0, section 3.2.1.
Lastly, the Panel considers that the registration of 28 disputed domain names (which are apparently under common control) with essentially the same registration dates, composition, use, and suspect registration details, is indicative of a pattern of abuse and further support a finding of bad faith in this case.
Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.
The Panel finds that the Complainant has established the third element of the Policy.
page 7
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 <uagaustralia.com>, <uagbelgie.com>, <uagcanada.com>,
<uagcasesuk.com>, <uagcasethailand.com>, <uagchile.com>, <uagcolombia.com>, <uagdanmark.com>,
<uagdeutschland.com>, <uagespana.com>, <uagfrance.com>, <uaggreece.com>, <uagindonesia.com>,
<uagireland.com>, <uagitalia.com>, <uagksa.com>, <uag-malaysia.com>, <uagnederland.com>,
<uagnorge.com>, <uagphilippines.com>, <uagpolska.com>, <uagportugal.com>, <uagromania.com>,
<uagschweiz.com>, <uagsingapore.com>, <uagslovakia.com>, <uagsuomi.com>, and <uaguae.com> be
transferred to the Complainant.
/Edoardo Fano/
Edoardo Fano
Sole Panelist
Date: December 17, 2024
0
0
0