Worldwide Limited v Johnson Robert, Oscar Nickson

WIPO Case No. D2024-5146

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Cutting Edge Ventures Limited, Naked Wolfe Footwear Pty. Ltd., Naked
Worldwide Limited v. Johnson Robert, Oscar Nickson

Case No. D2024-5146

1. The Parties

The Complainants are Cutting Edge Ventures Limited (the “First Complainant”), Naked Wolfe Footwear Pty. represented by ACCOLADE IP LIMITED, China.

The Respondents are Johnson Robert, South Africa, and Oscar Nickson, Australia.

2. The Domain Names and Registrar

The disputed domain names <nakedwolfeboots.cc> and <nakewolfezone.com> are registered with

Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, revealed by the Registrar, requesting the Complainants 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 Complainants filed an amended Complaint on December 20, 2024.
2024. On December 13, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain names. On December 16, 2024, the Registrar
transmitted by email to the Center its verification response disclosing registrant and contact information for
the disputed domain names which differed from the named Respondent (Registrant Details Undisclosed) and

contact information in the Complaint. The Center sent an email communication to the Complainants on

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2025.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 16, 2025. 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 a family-run group of businesses offering footwear, accessories and swimwear
through the official website available at <nakedwolfe.com> as well as through physical stores under the

NAKED WOLFE trademark.

The First Complainant is the owner, amongst others, of the following trademark registrations:

- European Union Trademark Registration No. 015170351 for the word mark NAKED WOLFE, filed on March 1, 2016, registered on April 27, 2017, in classes 18 and 25;

- European Union Trademark Registration No. 018500826 for the word mark NAKED WOLFE, filed on June 25, 2021, registered on November 11, 2021, in classes 9 and 35; and

- United States of America Trademark Registration No. 5,807,181 for the word mark NAKED WOLFE, filed on February 18, 2016, registered on July 16, 2019, in class 18.

The disputed domain name <nakedwolfeboots.cc> was registered on November 25, 2024, and presently resolves to an online web shop purportedly offering the Complainants’ products. The disputed domain name <nakewolfezone.com> was registered on April 25, 2024, and presently redirects Internet users to the web shop available at disputed domain name <nakedwolfeboots.cc>.

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainants assert to offer luxury fashion footwear, accessories, and swimwear for men and women, contending that the disputed domain names are being used in connection with fake websites that reproduce the Complainants’ trademarks and logos as well copyright-protected materials which are being used to deceive the public and Complainants’ customers.

The Complainants further contend that the disputed domain names are subject to common control and the consolidation of multiple Respondents would be fair and equitable to all Parties.

According to the Complainants, both disputed domain names incorporate the Complainants’ NAKED WOLFE trademark in its entirety; the addition of the terms “boots” or “zone” in the disputed domain names not preventing a finding of confusing similarity thereof, rather the contrary given the use made of the disputed domain names by the Respondents.

As to the absence of rights or legitimate interests, the Complainants argue that the Respondents have not been authorized by the Complainants to register or use the disputed domain names which are being used in connection with an online shop that creates an impression that the products being offered would be

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legitimate and from the Complainants, what is false and fraudulent. Furthermore, the Respondents are
likewise not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use
of the disputed domain names which are rather being used by the Respondents in an attempt to pass off as
the Complainants or mislead consumers into believing that the Respondents are authorized or sponsored
entities.

In what it relates to the bad faith registration and use of the disputed domain names, the Complainants assert that the Respondents were fully aware of the Complainants and their well-known trademark at the time of registration of the disputed domain names as shown by the use made of the disputed domain names in connection with the online shop purportedly offering the Complainants’ products and likely misleading Internet users into believing that the Complainants are operating the disputed domain names, what is not true.

B. Respondents

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Procedural matter – Consolidation of Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The Complainants alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainants 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 Complainants’ 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 Complainants’ 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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes, as seen above, that both disputed domain names: (i) entirely incorporate the Complainants’ NAKED WOLFE trademark; (ii) were registered within a relatively short period of time; and (iii) resolve to the same website purportedly offering the Complainants’ products.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants in a single proceeding, hereby referring to them as the “Respondent”.

6.2 Substantive matter

Paragraph 4(a) of the Policy sets forth the following three requirements which the Complainants must meet in order for the Panel to order the transfer of the disputed domain names:

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

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(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 Complainants’ trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainants have 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 <nakedwolfeboots.cc> and the mark
is recognizable within the disputed domain name <nakewolfezone.com> despite the missing letter “d”.
Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, sections 1.7 and 1.9.

Although the addition of other terms (“boots” and “zone”) in the disputed domain names 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 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.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainants to make at least a prima facie case against the Respondent under the second UDRP element.

In that sense, the Panel notes that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain names or the absence of any trademarks registered by the Respondent corresponding to the disputed domain names, corroborates the indication of an absence of rights or legitimate interests in the disputed domain names.

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Also, according to the evidence submitted by the Complainants, the use made of the disputed domain names in connection with an online shop reproducing the Complainants’ trademarks and allegedly offering the Complainants’ products, clearly suggest at least an affiliation with the Complainants which in fact does not exist.

Therefore, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names. The second element of the Policy has also been met.

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.

The registration and use of the disputed domain names in bad faith can be found in the present case in view of the following circumstances:

(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names, not having submitted a response;

(ii)       the well-known status of the Complainants’ trademark;

(iii)      the nature of the disputed domain names (reproducing the entirety/typosquatted version of the

Complainants’ trademark), and the Respondent’s likely intention to unduly profit from the value of the Complainants’ trademark, suggest rather a clear indication of the Respondent’s registration and holding of the disputed domain names in bad faith, with the implausibility of any good faith use to which the disputed domain names may be put; and

(iv)      the indication of what appears to be false or incomplete addresses, not being the Center able to

deliver the written notice to the Respondent.

The Panel finds that the Complainants have 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 names <nakedwolfeboots.cc> and <nakewolfezone.com> be transferred to the Complainants.

/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Sole Panelist
Date: January 22, 2025