The Complainant is Columbia Sportswear Company, United States of America (“United States”), represented by Strategic IP Information Pte Ltd., Singapore.
The Respondents are Ericka Truong, Loretta Bonilla, Fatima Willingham, Laurence Greenberg, and Arnoldo Browning, United States; Domain Admin Registrant, Whoisprotection.cc, and Client Care, Web Commerce Communications Limited, Malaysia.
The disputed domain names <columbiaclothingindia.com>, <columbiainuk.com>, <columbiaoutletes.com>, <columbiasouthafrica.com>, <columbiastorecanada.com>, and <columbiastoremx.com> are registered with Alibaba.com Singapore E-Commerce Private Limited (the “First Registrar”).
The disputed domain names <columbiakauppa.com>, <columbiaonlinept.com>, and <columbiasconti.com> are registered with NETIM SARL (the “Second Registrar”).
The disputed domain names <columbiamodelleri.com> and <columbiastoreireland.com> are registered with Gransy, s.r.o. d/b/a subreg.cz (the “Third Registrar”).
The disputed domain name <columbianzstore.com> is registered with NameSilo, LLC (the “Fourth Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2021. On October 26, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names.
On October 26, 2021, the Fourth Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint.
On October 27, 2021, the Second 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.
On November 1, 2021, the Third 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.
On November 5, 2021, the First 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 November 5, 2021, 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 November 9, 2021.
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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 13, 2021.
The Center appointed Jeremy Speres as the sole panelist in this matter on December 20, 2021. 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 Complainant is an outerwear and sportswear company, 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. It has used the COLUMBIA trade mark for over 80 years and the COLUMBIA SPORTWEAR COMPANY trade mark for over 60 years.
The Complainant is the owner of trade mark registrations for the marks COLUMBIA and COLUMBIA SPORTSWEAR COMPANY (“the Complainant’s marks”) in many countries. One example is United States trade mark registration no. 2,047,397 COLUMBIA in classes 18 and 25, bearing a registration date of March 25, 1997. The Complainant owns the domain name <columbia.com>, registered May 4, 1993, at which it hosts its primary website.
The disputed domain names were registered on the following dates:
|
Domain Name |
Registration Date |
|
<columbiaclothingindia.com> |
April 16, 2021 |
|
<columbiainuk.com> |
July 30, 2021 |
|
<columbiakauppa.com> |
May 18, 2021 |
|
<columbiamodelleri.com> |
August 28, 2020 |
|
<columbianzstore.com> |
May 28, 2021 |
|
<columbiaonlinept.com> |
April 2, 2021 |
|
<columbiaoutletes.com> |
April 20, 2021 |
|
<columbiasconti.com> |
May 13, 2021 |
|
<columbiasouthafrica.com> |
April 28, 2021 |
|
<columbiastorecanada.com> |
April 20, 2021 |
|
<columbiastoreireland.com> |
March 5, 2021 |
|
<columbiastoremx.com> |
March 19, 2021 |
At the time of the Complaint, the disputed domain names all resolved to websites offering COLUMBIA products at discounted prices and displaying the Complainant’s brand imagery and copyright images.
The Complainant contends that the disputed domain names are confusingly similar to its COLUMBIA mark, that the Respondents have no rights or legitimate interests in the disputed domain names, and the disputed domain names were registered and have been used in bad faith given that the websites to which the disputed domain names have resolved reproduce the Complainant’s mark and copyright images such that they are calculated to be passed off as being associated with or endorsed by the Complainant.
The Respondents did not reply to the Complainant’s contentions.
The Panel concludes that the disputed domain names are subject to common control for the following reasons:
a) All of the websites to which the disputed domain names have resolved use an identical email address to confirm account registration;
b) all of the disputed domain names target the same trade mark and follow the same composition pattern;
c) the use of the same catalogue of images in the product listings on each of the associated websites;
d) the same structure and filenames used for the code of all of the websites to which the dispute domain names have resolved;
e) a pattern of similar behaviour, such as the Respondents not having replied to the Complaint; and
f) the Registrant details in the WhoIs following a similar pattern.
The Panel considers consolidation fair and equitable to all Parties as all the 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 consolidation (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.11.2). Therefore, the Panel accepts the Complainant’s request for consolidation.
Where the trade mark is recognisable in the domain name, the addition of other terms does not prevent a finding of confusing similarity (WIPO Overview 3.0 at section 1.8). The Complainant’s COLUMBIA mark is readily apparent in the disputed domain names as the first and dominant element, and the additional terms “clothing”, “india”, “inuk”, “kauppa”, “modelleri”, “nzstore”, “onlinept”, “outletes”, “sconti”, “southafrica”, “store” “canada”, “storeireland” and “storemx” do not impact the assessment of confusing similarity. The Complainant has satisfied the first requirement under paragraph 4(a)(i) of the Policy.
The Complainant has adduced sufficient evidence to establish that its COLUMBIA mark was well known long prior to registration of the disputed domain names. The disputed domain names are confusingly similar to the Complainant’s well-known, registered COLUMBIA mark and the Complainant has certified that the disputed domain names are unauthorised by it. There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain.
The Complainant has presented credible, uncontroverted evidence that the disputed domain names have been used to pass off the websites to which they have resolved as being associated with or endorsed by the Complainant and to infringe the Complainant’s copyright. UDRP panels have categorically held that use of a domain name for illegal activity (e.g.,passing off and copyright infringement) can never confer rights or legitimate interests (WIPO Overview 3.0 at section 2.13.1). The lack of any clarifying content as to the relationship, or lack thereof, to the Complainant further underscores the misleading nature of the disputed domain name and fails to qualify as fair use (WIPO Overview 3.0 at section 2.8).
The Complainant has made out a prima facie case that the Respondents lacks rights or legitimate interests and the burden of production thus shifts to the Respondents (WIPO Overview 3.0 at section 2.1), which the Respondents have failed to rebut.
The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the disputed domain names were registered and have been used in bad faith for the following reasons. Firstly, the Complainant’s COLUMBIA marks were well known internationally at the time of registration of the dispute domain names. A simple online search would have revealed this to the Respondents (WIPO Overview 3.0 at section 3.2.3).
Secondly, 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’s marks at the time of registration of the disputed domain names, and have intentionally attempted to mislead Internet users by creating a likelihood of confusion with the Complainant’s COLUMBIA marks.
Thirdly, the addition of the words previously mentioned in section A are descriptive of the Complainant’s business or which are geographic to the Complainant’s COLUMBIA mark suggests a familiarity with the Complainant’s mark (WIPO Overview 3.0 at section 3.2.1).
In the circumstances of this case the Panel draws adverse inferences from the Respondents’ use of privacy services (WIPO Overview 3.0 at section 3.6) as well as the Respondents’ failure to take part in the present proceeding where an explanation is certainly called for (WIPO Overview 3.0 at section 4.3).
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, <columbiaclothingindia.com>, <columbiainuk.com>, <columbiakauppa.com>, <columbiamodelleri.com>, <columbianzstore.com>, <columbiaonlinept.com>, <columbiaoutletes.com>, <columbiasconti.com>, <columbiasouthafrica.com>, <columbiastorecanada.com>, <columbiastoreireland.com>, and <columbiastoremx.com> be transferred to the Complainant.
Jeremy Speres
Sole Panelist
Date: January 3, 2022