Decision for dispute CAC-UDRP-104871

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the Disputed Domain Names.

Mark: OSPREY (wordmark)
Registration number: 1049358 – International registration
Entered on register: 11 -8 - 2010
Registered in class 12, 18, 21

Mark: OSPREY (figurative mark)
Registration number: 1074730 – International registration
Entered on register: 26 -8 - 2010
Registered in class 12, 18, 20 

Mark: OSPREY (wordmark)
Registration number: 004312534 - European Union Intellectual Property Office (“EUIPO”).
Entered on register: 28-6-2007
Registered in class 18, 35 

Mark: OSPREY (figurative mark)
Registration number: 004312518 - EUIPO.
Entered on register: 14-2-2006
Registered in class 9, 18, 25, 35

Mark: OSPREY (figurative mark)
Registration number: 2571330 - United States Patent and Trademark Office (“USPTO”).
Entered on register: 21-5-2002
Registered in class 18
The above trademarks are referred to collectively and individually as the "Trademark(s)”.

Osprey Packs, Inc. (“Complainant”) designs, sources, distributes, sells and markets outdoor backpacks since its foundation in 1974. Complainant specializes in technical adventure backpacks that can endure long stretches of travel under difficult conditions. Complainant’s products are known for their good quality and innovative features and are sold on its domain <osprey.com> which was created in April of 1999.

The non-appearing Respondent has registered 59 domain names and is trying to “corner the market” in domain names that reflect the Complainant’s trademarks, registering many variations containing its trademarks in combination with generic terms related to Complainant’s products and/or geographical terms which refer to a single country. Respondent passes itself off as Complainant even down to its design logo and copyright notification. If consumers were to access the websites they would be beguiled into believing they had reached Complainant resulting, most likely, to their economic injury and consequential reputational harm to Complainant.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

PARTIES' CONTENTIONS:

COMPLAINANT:

The Complainant owns rights in the word marks OSPREY and the figurative mark OSPREY (an image of “birds and bats in flight or with outstretched wings”). The non-appearing Respondent has registered 59 domain names that resolve to websites that pass themselves off as Complainant. All of the Disputed Domain Names are confusingly similar to the Complainant's marks differing only in adding geographical locations and descriptive words to the domain names. Complainant asserts that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names and is creating injury to both Complainant and consumers by resolving to websites that mimic the Complainant's official website at <osprey.com>.

To consumers the Disputed Domain Names will be seen as resolving to authentic websites with authentic goods, while in fact they are passing off as the Complainant by featuring the Complainant's trademarks and the figurative design positioned as represented in Complainant's authentic website, and even to the extent of placing a false and misleading copyright notice in its footer; and claiming it owns copyrights in the content / products offered on the websites. Use of the Complainant's marks to imitate the Complainant's genuine website cannot constitute a bona fide offering of goods or services. The Respondent has not been commonly known by the Disputed Domain Names. The Respondent is not making legitimate, non-commercial or fair use of the Disputed Domain Names

The Disputed Domain Names have evidently been registered in batches by the Respondent. The first of 29 domain names have been registered on March 15, 2022 and the second batch of 29 domain names have been registered between June 20 and 29, 2022 (just 9 days apart!). Complainant also notes that a new domain <osprey-southafrica.com> was registered on September 8, 2022, just a few weeks ago. Complainant has exclusive trademark rights which predate the registration of the disputed domain names.

The Respondent has registered the domain names in order to prevent the Complainant from reflecting the Complainant's marks in the Disputed Domain Names, and engaged in a pattern of such conduct. It is clear from the contents of the websites that Respondent had actual knowledge of Complainant's rights in the trademarks prior to the registration of the Disputed Domain Names. The impersonation and passing off as outlets of the Complainant in the different countries is misleading and confuses consumers, and amounts to abusive registration.

RESPONDENT:

Respondent did not submit a response in this proceeding and as noted further below is hiding its identity behind a proxy.

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Disputed Domain Names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

PRELIMINARY MATTERS - NO RESPONSE

1. LANGUAGE 0F THE PROCEEDINGS

The Complainant requests the language of this administrative proceeding be in English for the following reasons:
- The Disputed Domain Names  are all formed by words in the Latin script and not in Chinese characters.
- All of the Disputed Domain Names include the English-language trademark(s).
- All of the Disputed Domain Names are in the international .com zone.Respondent uses English on a large number of the Disputed Domain Names, demonstrating that Respondent is familiar with the English language.
- The WHOIS data mentions: “Registrar URL: http://www.alibabacloud.com, meaning that Respondent used the Registrar’s English language website to register the domain names. Furthermore, the registrar, Alibaba Singapore, uses an English language domain name registration agreement (https://www.alibabacloud.com/).

Requiring the Complainant to translate the Complaint into another language would create an undue burden and delay. Respondent has not brought forward any arguments that using the English language in this proceeding would not be fair and efficient.

The Panel concurs with Complainant. It is evident that Respondent is as fluent in English as it is in deceit. Accordingly, for the reasons Complainant states as well as the Panel's conclusion that the content of the websites to which the Disputed Domain Names resolve and Respondent's evident purpose of trafficking Complainant's mark by pretending to be Complainant is a clear violation of the Policy. Accordingly, the proceeding shall be in conducted in English.  

2. CONSOLIDATION

The Complainant requests consolidation of all the Disputed Domain Names into this single case. The Complainant asserts that all the Disputed Domain Names are owned or under the effective control of a single person or entity, or a group of individuals acting in concert.

According to the provisions of paragraph 10(e) of the Rules, the Panel has the power to decide the consolidation of multiple domain names disputes. Further, 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.

Complainant states that the Registrar's response, after Registrar Verification, has revealed that 58 out of 59 disputed domains are registered to the same Registrant: "Web Commerce Communications Limited", doing business as Webnic.cc. Webnic.cc is however simply a reseller of the Registrar's domain name registration services, it is not the beneficial owner of the domain names. Complainant states with regard to this proxy that: 

"Web Commerce Communications Limited dba WebNIC, a leading Asian domain name registrar is expanding its services by partnering with Alibaba Cloud [...] As the first online channel reseller in the domain business of Alibaba Cloud, WebNIC aims to help bridge the technical gap of cloud computing [...]". 

Complainant presents a cogent analysis of the proxy's role and the covering up of the beneficial owner of the Disputed Domain Names. It states that a reseller is simply reselling the service of the Registrar. Hence the Registration Data that is known to the Registrar has not been disclosed. Thus, the Registrar could and should have provided the details of the underlying Registrants. The failure to disclose the beneficial owner is in violation of the Temporary Specification for gTLD Registration Data: Registrar Requirement: The Registrar MUST provide the UDRP provider with the full Registration Data for each of the specified domain names, upon the UDRP provider notifying the Registrar of the existence of a complaint [...]" 

In principle, since the named Respondent is the same, it therefore does not seem that in the present case "a complaint is filed against multiple respondents" (which would make it necessary to consider whether or not it is more likely than not that all of the disputed domain names are under common ownership or control). 

In the case of a single holder, according to 3(c) of the UDRP Rules this would constitute a single case, no consolidation being necessary: "(c) The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder."  

However, Complainant shows with regards to <ospreyromania.com> that this disputed domain name should be considered to be owned or under the effective control of the same Respondent as the 58 other disputed domain names. Complainant refers to the common factors outlined below.

A complaint is allowed to proceed with multiple respondents when the domains or websites are under common control. See WIPO Overview 3.0 at section 4.11.2, where it states: “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 Complaint identifies several common factors:

•  58 out of 59 disputed domain names have been registered at the same Registrar, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED. The sole outlier <ospreyromania.com>, has been registered at Key-Systems GmbH. Complainant notes that this disputed domain name was registered on the same date as other disputed domain names that have been registered at Alibaba, such as <osprey-turkiye.com> and <ospreyhatizsak.com>. All disputed domain names use a similar naming pattern, namely the entirety of Complainant’s trademark, accompanied by a geographical term and/or a generic term, sometimes divided by a ‘dash’ sign.

•  All Disputed Domain Names except for 1 (osprey-southafrica.com) have been registered within a short timeframe (roughly 3 months apart). Half of the disputed domain names have been registered on the same day, March 15, 2022. The other half of the disputed domain names has been registered within a span of 9 days, between June 20 and 29, 2022.

•  All Disputed Domain Names use substantially the same template and serve the same function,namely the sale of backpacks. All disputed domain names use identical Privacy Notices, albeit in translated versions. This is evident due to the use of a capital letter at the beginning of each word in the Privacy Notice.

•  All dDisputed Domain Names contain the Complainant’s visual mark in the header of the page and substantially the same fake copyright nice at the bottom, which states that they are ‘powered by’ themselves (“Copyright © 2022 ospreybatohy Powered by ospreybatohy.com”).

•  All Disputed Domain Names are hosted on only 3 different IP address-zones: 172.67, 188. 114 and 104.21.

•  All Disputed Domain Names use Cloudflare.com Nameservers.

Finally, as in Pandora A/S v. Larry Sack [and 6 others], CAC 103259 <JOYASPANDORA.NET and 8 other domain names> "none of the common factors identified in the Complaint nor the inference that the disputed domain names are under common control have been disputed".

The Panel concurs with Complainant’s analysis. The evidence establishes that all of the Disputed Domain Names have been registered as part of a large sale and sophisticated attempt to establish a large number of websites which target the Complainant and its products (see below). Accordingly, the Panel agrees that the Disputed Domain Names are under common control and as such are represented. Consolidation would be fair and equitable to all Parties as it will result in considerable savings in cost and is clearly convenient. The Panel finds that consolidation is appropriate for the present proceeding. 

     3.  PROXY NAMED AS RESPONDENT

UDRP Rule 1 (Definitions) defines Respondent as “the holder of a domain name registration against which a complaint is initiated.” Here, Respondent appears through its proxy. The registrar has failed to disclose the name of the Respondent. The Panel in Puma SE v. Client Care, Web Commerce Communications Limited, WIPO Case No. D2022-0015 (the same proxy as in this case) considered the proxy as the only Respondent. Similarly, Brooks Sports, Inc. v. Domain Admin / Whoisprotection.cc, FA2102001932380 (Forum March 15, 2021). Other Panels have similarly elected to proceed on the basis “that the principles applicable to privacy and proxy services are applicable and adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

In The Hartman Media Company, LLC v. Host Master, 1337 Services LLC, WIPO Case No. D2018-1722 the Panel noted:

In the present case as no other respondent has been notified the Panel considers it appropriate to proceed against “Host Master”. References to the Respondent should be understood as also including the person or persons who caused the registration to be affected in the name of “Host Master”

In WIPO Case No. D2021-4291, par. 6 (referencing (WIPO Overview 3.0 at section 4.4.5): "On the other hand, e.g., where there is no clear disclosure [...] a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent. In the present case [...] the Panel considers it appropriate to proceed against all named Respondents including Domain Admin, WHOISprotection.cc and Web Commerce Communications Limited. " See also WIPO Case D2022-0015, where the Registrar was also Alibaba.com Singapore E-Commerce Private Limited, and "Client Care, Web Commerce Communications Limited, Malaysia", was simply considered the (only) Respondent by the Panel.

This Panel accepts the reasonableness and logic of these decisions and finds that the Proxy, "Web Commerce Communications Limited" fully represents the underlying beneficial owner of the 59 domain names and should be understood as also including the person or persons who caused the registration to be affected in the name of the Proxy.

Paragraph 15(a) of the Rules for the UDRP ('the Policy') instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

• the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
• respondent has no rights or legitimate interests in respect of the domain name; and
• the domain name has been registered and is being used in bad faith.

In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (FORUM July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").

Rights

The Complainant claims rights in the word and figurative designs as identified in Section `Identification of Rights' above. The Complainant has provided the Panel with the evidence of such trademark registrations. The Panel notes that a national or an international trademark registration is sufficient to establish rights in that mark. As such, the Panel finds that the Complainant has established its rights in the word and figurative marks OSPREY.

The Complainant contends that all of the Disputed Domain Names are confusingly similar to the Complainant's marks.  The Panel has specifically analyzed that all of the Disputed Domain Names are comprised of Complainant's trademarks each incorporating a different geographical location.

The Panel observes that the addition of '.com' gTLDs and a descriptive or geographical term is generally disregarded in the assessment under paragraph 4(a)(i) of the Policy when comparing a disputed domain name and a trademark. Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant's trademarks.

No rights or legitimate interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Names under Policy paragraph 4(a)(ii). If it does so the burden of production then shifts to Respondent to show it does have rights or legitimate interests. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP). See also Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum November 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy paragraph 4(a)(ii).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. It has not authorized the registrations of the Disputed Domain Names, Respondent has not been commonly known by the Osprey name, and no content on the websites to which they resolve support a conclusion that they are noncommercial or fair use. Indeed, the opposite is the case.

As a result of the Panel's checking each of the Disputed Domain Names' resolving websites as identified in Section 'Factual Background' above notes that they mimic the Complainant's official website at <osprey.com> and pass off the Respondent as the Complainant by featuring the Complainant's trademarks, the exact same figurative design at the top of every one of its active websites and placing a false and misleading copyright notice in its footer; and claiming it owns copyrights in the content / products offered on the websites.

The Panel finds that the use of the Complainant's marks to imitate the Complainant's genuine website does not constitute a bona fide offering of goods or services. The Respondent has not been commonly known by the Disputed Domain Names. The Respondent is not making a legitimate, non-commercial or fair use of the Disputed Domain Names. For these reasons, the Panel finds that the Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against the Respondent.

Accordingly, the burden shifts to Respondent. As it has not filed a Response or attempted by any other means to rebut the prima facie case against it, and as the motivation for its registrations of the 59 Disputed Domain Names is evident from their design and contents the Panel concludes that the Respondent has no rights or legitimate interests in any of the Disputed Domain Names.

Bad faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.

The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith. With respect to Paragraph 4(b)(ii), the Panel notes that the Respondent registered 59 confusingly similar domain names to the Complainant's marks between March 15, 2022 and June 29, 2022. The Panel observes that registering multiple domain names that incorporate a complainant's trademark may constitute a pattern of bad faith conduct. See Alexa Internet/Amazon Technologies, Inc./eBaylnc./Elance, Inc./PayPal, Inc. v. duan xiangwang, CAC 100614 (August 1, 2013) (finding "respondent's registration and use of multiple domain names for each respective trademark that violates Complainants' rights in their respective marks constitutes a pattern of bad faith registration."); see also Salvatore Ferragamo S.p.A v. Ying Chou, WIPO Claim No. D2013-2034 (finding "the fact of registering four domain names that incorporate the complainant's trademark represents, in the panel's assessment, a pattern of conduct directed against the complainant, stopping it from reflecting its trademark in the disputed domain names.)”.

The Panel also notes that Respondent in passing itself off as Complainant is acting in competition with it in violation of Paragraph 4(b)(iii). Complainant points out that Respondent has added the following words at the bottom of some of the Disputed Domain Names (for example on the first page relating to <mochilaospreychile.com>):
“Follow Osprey Stay Connected with us”

By adding this wording, Respondent essentially states that these domains are operated by Complainant due to the reference to Complainant as “us”. It is easy to envision that the average internet user may be misled into believing that the website is an official domain of Complainant because of such wording. Complainant emphasizes that Respondent has not added any type of “Disclaimer” anywhere on any of the Disputed Domain Names which clearly and unambiguously states Respondents lack of a commercial relation with Complainant.

The Complainant further contends, and the evidence it adduces unquestionably supports the conclusion, that Respondent registered the Disputed Domain Names with actual knowledge of the Complainant's rights in the trademarks prior to the registration of the Disputed Domain Names. Complainant adduces evidence that conclusively establishes its contentions that Respondent has targeted its well-known mark as evidenced by the mimicking of Complainant's website at <osprey.com>.  See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum December 24, 2018) ("Complainant contends that Respondent's knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant's mark, demonstrating bad faith registration and use under Policy paragraph 4(a)(iii).").

Next, the Complainant contends that the impersonation and passing off as being an outlet of the Complainant is misleading and confuses consumers, and amounts to bad faith under Paragraph 4(b)(iv) of the Policy. Each of the Disputes Domain Names resolve to websites that mimic the Complainant's official website at <osprey.com> and pass off the Respondent as the Complainant by featuring the Complainant's trademarks, the exact word and figurative design consisting of the Complainant's registered trademark for the OSPREY mark at the top of every one of its active websites and placing a false and misleading copyright notice in its footer; and claiming it owns copyrights in the content / products offered on the websites.

Use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy paragraph 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy paragraphs 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant's business); see also Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy paragraph 4(b)(iii) because the respondent used the resolving website to sell the complainant's products, using images copied directly from the complainant's website); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy paragraph 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.").

Finally, this is not a case of balancing the interests of competitors or other legitimate commercial parties, rather, it concerns an obvious attempt to mislead and defraud consumers, simply using the Complainant’s famous name to give them a false sense of security they are dealing with Complainant. Justerini & Brooks Ltd v. "Colmenar", WIPO Case No. D2000-1308 (December 11, 2000) (“[G]iven the distinctiveness and notoriety of complainant’s name, it would not be chosen legitimately by another trader except to create a false impression.”). Therefore, the Panel concludes that the Respondent registered and is using the Disputed Domain Names in bad faith per paragraph 4(b)(iii) or (iv) of the Policy.

Accordingly, Complainant has demonstrated that Respondent has registered the 59 domain names in bad faith and is using them in bad faith, and as demanded are ordered transferred to Complainant.