The Complainant is Columbia Sportswear Company, United States of America, represented by Strategic IP Information Pte Ltd., Singapore.
The Respondents are NameSilo, LLC, PrivacyGuardian.org, United States of America; Steffen Schmidt, Germany; Tim Fischer, Germany; Klaudia Burger, Germany; Mario Wulf, Germany; Anne Ostermann, Germany; Steffen Baecker, Germany; Sebastian Loewe, Germany; and Uwe Kohler, Germany.
The disputed domain names <columbiaakcio.com>, <columbiagreece.com>, <columbiaindirimmagazasi.com>, <columbiaromaniamagazine.com>, <columbiaromaniaonline.com>, <columbiasportswearcanada.net>, <columbiasportsweardanmark.com>, <columbiavypredaj.com> are registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2019. On May 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 21, 2019, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on May 21, 2019 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 May 28, 2019.
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 May 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2019.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on July 10, 2019. 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.
In both the original Complaint and the amended Complaint, the Complainant requested consolidation of the Complaint against the above-named Respondents on the basis that the circumstances and evidence suggest that the disputed domain names are subject to common control.
The Complainant states that it is a globally renowned outerwear and sportwear company being a global leader in designing, sourcing, marketing, and distributing outdoor and active lifestyle apparel, footwear, accessories and equipment. It distributes its products in approximately 100 countries and operates a network of retail stores in the United States, Canada, European Union, Asia and Latin America.
The Complainant states that it has used COLUMBIA as a key component of its business name since 1938. It initially commenced business under the name COLUMBIA HAT COMPANY and in 1969 adopted the current business name COLUMBIA SPORTSWEAR COMPANY.
The Complainant is the owner of the trade marks COLUMBIA and COLUMBIA SPORTSWEAR COMPANY (“the Complainant’s COLUMBIA marks”). It has used the COLUMBIA trade mark for over 80 years and the COLUMBIA SPORTWEAR COMPANY for over 60 years. These marks remain in extensive use worldwide. Consequently, the Complainant states that its trade marks are well-known trade marks within the sportswear and outdoor related goods and services industry globally. Example trade marks include:
|
Mark |
Trade mark number |
Country |
Date of registration |
Class |
|
COLUMBIA |
2,047,397 |
United States |
March 25, 1997 |
18, 25 |
|
|
2,248,491 |
United States |
June 1, 1999 |
18, 25 |
|
|
3,126,131 |
United States |
August 8, 2006 |
18, 25 |
|
|
004152294 |
European Union Trade Mark |
December 15, 2005 |
3, 8, 9, 11, 18, 20, 21, 24, 25 |
The Complainant also states that it is the owner of the domain name <columbia.com> (“www.columbia.com”), social media sites “www.facebook.com/ColumbiaSportswear”, Twitter (“@Columbia1938”), Instagram (“Columbia1938”), and YouTube (“www.youtube.com/ColumbiaSportswear”).
The disputed domain names were registered as follows:
<columbiaakcio.com> was registered on October 18, 2018 by Steffen Schmidt;
<columbiagreece.com> was registered on October 18, 2018 by Tim Fischer;
<columbiaindirimmagazasi.com> was registered on September 17, 2018 by Sebastian Loewe;
<columbiaromaniamagazine.com> was registered on December 20, 2018 by Anne Ostermann;
<columbiaromaniaonline.com> was registered on September 13, 2018 by Klaudia Burger;
<columbiasportswearcanada.net> was registered on October 29, 2018 by Uwe Kohler;
<columbiasportsweardanmark.com> was registered on September 10, 2018 by Mario Wulf; and
<columbiavypredaj.com> was registered on September 7, 2018 by Steffen Baecker.
The various dates of registration are collectively referred to as “the Relevant Dates”.
At the time of the Complaint, the disputed domain names all resolved to websites offering COLUMBIA products at heavily discounted prices and displaying the Complainant’s brand imagery and copyright images.
The Complainant asserts its rights in the COLUMBIA marks. The Complainant contends that the disputed domain names are confusingly similar to its COLUMBIA marks as each reproduce the distinctive part of the Complainant’s COLUMBIA marks and corporate trade name COLUMBIA. The Complainant contends that the addition of the words “akcio”, “greece”, “indirimmagazasi”, “romaniamagazine”, “romaniaonline”, “sportswearcanada”, “sportsweardanmark”, and “vypredaj” to the word “Columbia” do not serve to distinguish the disputed domain names from the its COLUMBIA marks and trade name as consumers are likely to deem the use of these words as natural extensions of the Complainant’s COLUMBIA marks. In addition, and importantly, the websites to which the disputed domain names resolve all appear to offer (legitimate) COLUMBIA products.
The Complainant also states that the use of its COLUMBIA mark and its copyright images on each of the websites to which the disputed domain names resolve, together with the identical use of the COLUMBIA mark in the disputed domain names reinforces an association with an endorsement by COLUMBIA.
The Complainant also contends that the Respondents have no rights in respect of the disputed domain names. In this respect, the Complainant states that it, and none of its associated entities, have any relationship with the Respondents. The Complainant has not provided authorisation to any of the Respondents or the Registrar, NameSilo, to use the COLUMBIA trade mark or trade name, neither in whole nor in part, in any manner whatsoever, including as a domain name.
The Complainant further contends that the Respondents have no legitimate interests in respect of the disputed domain names. The Complainant contends that the Respondents’ use of the disputed domain names is to make unfair use of its COLUMBIA marks and trade name and to sully the reputation of its business under its COLUMBIA marks.
Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant contends that the Respondents must have been aware of its COLUMBIA marks and trade name when the disputed domain names were chosen, given its long- and well-established reputation in the COLUMBIA marks. Therefore, the Complainant contends that the Respondents chose to use the COLUMBIA marks in the disputed domain names to pass off the websites in question as being associated with or endorsed by the Complainant.
The Respondents did not reply to the Complainant’s contentions.
Paragraph 3(c) of the UDRP 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, and paragraph 10(e) of the UDRP Rules grants the panel the power to consolidate multiple domain name disputes.
In the present case, each of the disputed domain names is registered to a different holder. However, it is to be noted that where a Complaint is filed against multiple respondents, UDRP panels look at whether the disputed domain names or corresponding websites are subject to common control, and the consolidation would be fair and equitable to all parties, as well as whether the procedural efficiency would also justify a consolidation scenario. In this respect, the Panel refers to section 4.11, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The circumstances and evidence of this case lead the Panel to conclude that consolidation is advisable and acceptable.
The Panel considers that the following circumstances point to the fact that all disputed domain names may probably be subject to a common control owned by the same individual or corporation that hides its identity under the use of various aliases:
(i) The common Registrar, namely NameSilo, LLC;
(ii) The fact that all the disputed domain names target the same trade mark and follow the same composition pattern;
(iii) The use of the same catalogue of images in the product listings on each of the associated websites;
(iv) The fact that technical analysis of the websites by the Complainant shows that the software operating the disputed domain names has the same unique code, including programmer remarks within the code implying that the websites are under common control;
(v) The fact that the Respondents each use a similarly styled cryptic non-responsive Sina webmail email address; and
(vi) The pattern of a similar behaviour, such as not having replied to the Complaint.
Considering each of the above circumstances, the Panel concludes that the Respondents may be the same company or individual, or commonly controlled by the same company or individual. Furthermore, the Panel considers the consolidation fair and equitable to all Parties, as all Respondents have been given a fair chance to reply to the Complaint and to the Complainant’s request for consolidation and that procedural efficiency justifies the consolidation of the Complaint. Therefore, the Panel accepts the Complainant’s request for consolidation.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements within respect to the disputed domain names in order to succeed in this proceeding:
(i) That the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) That the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith.
The Complainant has provided evidence of its registrations in relation to the COLUMBIA marks in the United States and European Union. In addition, the Complainant’s main website for its Internet activities is “www.columbia.com”. It is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the COLUMBIA marks with a history of use going back to 1938. The Panel is also satisfied that the Complainant is well known by its marks and in the sportswear and outdoor related goods and services industry globally.
The Panel finds that the disputed domain names contain as a first and dominant element the Complainant’s COLUMBIA mark, combined with a series of words which are related to geographic locations, sportswear and outdoor products. In this respect, it is worth noting that the additional words in the disputed domain names are either descriptive terms or combinations of descriptive terms with geographical locations - “akcio” is “action” in Hungarian; “greece” is a geographical location; “romaniamagazine” and “romaniaonline” combine a geographical location with a reference to a form of media; “sportswearcanada” and “sportsweardanmark” combine geographical locations with a reference to a type of product the Complainant is known to sell; “indirimmagazasi” is “discount store” in Turkish; and “vypredaj” is “sale” in Slovak. the use of additional, generic or descriptive words does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel also notes that it is well established that the addition of the generic Top-Level Domain (“gTLD”) “.com” and “.net” may be disregarded for the purposes of comparison under the first element.
In considering this first factor the issue is whether there is sufficient similarity between the disputed domain names and the Complainant’s COLUMBIA mark: Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662; Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903.
Therefore, the Panel finds that each of the disputed domain names is confusingly similar to a trade mark in which the Complainant has rights and that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondents may establish that they have rights or legitimate interests in the disputed domain names, among other circumstances, by showing any one of the following elements:
(i) That before notice of the dispute, the Respondents used or made demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) That the Respondents have been commonly known by the disputed domain names, even if they had acquired no trade mark or service mark rights; or
(iii) That the Respondents are making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The overall burden of proof for establishing that the Respondents have no rights or legitimate interests in respect of the disputed domain names lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not authorized the Respondents to use its COLUMBIA marks or trade name, neither in whole nor in part, in any manner whatsoever, including as a domain name.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondents and the absence of any claim to rights in the disputed domain names.
The Panel is satisfied that the disputed domain names have been registered in bad faith for the following reasons:
(i) At the time of registering the various disputed domain names, the Respondents must each have been aware of the Complainant, its COLUMBIA marks, the Complainant’s exclusive rights in those trade marks and the goodwill residing in those trade marks. The Panel accepts the Complainant’s assertions that its COLUMBIA marks are international, long-established and well-known in the sportswear and outdoor related goods and services industry.
(ii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “by applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that […] to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party […]. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” Even a most cursory trade mark or other online search or any online search of existing domain names prior to each of the Respondents registering the disputed domain names would have instantly revealed the Complainant and its trade marks. See in this regard section 3.2.3 of the WIPO Overview 3.0. The Respondents’ use of the COLUMBIA marks on the various websites hosted at the various disputed domain names, the use of the Complainant’s copyright images and the offering for sale of COLUMBIA products supports a finding that the Respondents knew of the Complainant, the Complainant’s COLUMBIA marks and the Complainant’s products and services at the Relevant Dates.
(iii) The Panel notes the nature of the disputed domain names and agrees that the use of the descriptive terms on their own or in combination with a geographical location (“akcio”, “greece”, “indirimmagazasi”, “romaniamagazine”, “romaniaonline”, “sportswearcanada”, “sportsweardanmark”, and “vypredaj”) do not serve to distinguish the disputed domain names from the Complainant’s COLUMBIA marks, trade name or registered domain names. Rather, these words are likely to mislead consumers into believing that the disputed domain names are related to the Complainant’s business in the sportswear and outdoor related industry.
The Panel is also satisfied that the disputed domain names have been used in bad faith. The websites to which the disputed domain names resolve offer COLUMBIA products at heavily discounted prices. They also display the Complainant’s copyright images. The Panel accepts that the Respondents use of the COLUMBIA trade mark together with the words “akcio”, “greece”, “indirimmagazasi”, “romaniamagazine”, “romaniaonline”, “sportswearcanada”, “sportsweardanmark”, and “vypredaj” was intentional on the part of the Respondents to, at the very least attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s COLUMBIA marks as to the source, sponsorship, affiliation, or endorsement of the websites. Given the nature of the additional words used, consumers visiting the websites corresponding to the disputed domain names will be confused, misled or deceived into believing that the sites are the local sites for the COLUMBIA brand and are endorsed by the Complainant. Further, consumers will be misled, confused or deceived into believing that the products available via the websites are legitimate COLUMBIA products.
The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondents.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.
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, <columbiaakcio.com>, <columbiagreece.com>, <columbiaindirimmagazasi.com>, <columbiaromaniamagazine.com>, <columbiaromaniaonline.com>, <columbiasportswearcanada.net>, <columbiasportsweardanmark.com>, <columbiavypredaj.com> be transferred to the Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: July 19, 2019
