Decision for dispute CAC-UDRP-104911

The Panel is unaware of any other pending or decided legal proceedings relating to the disputed domain names.

• International Trademark no. 996429 for “COMMON PROJECTS” since 27 November 2008;
• US Trademark registration no 4702027 for “COMMON PROJECTS” since 17 March 2015; and
• Italian Trademark no 0001659467 for “COMMON PROJECTS” since 2 December 2015.

The Complainant, Flavio Girolami, owns various trademark registrations, including the signs “COMMON PROJECTS”. “COMMON PROJECTS” was birthed from the collaboration between Prathan Poopat, an American-based art director, and Flavio Girolami, an Italian creative consultant.

“COMMON PROJECTS” came from a general concept that described the two creators working on their own projects from New York and Italy but also collaborating across the continents. The company’s headquarters are based in New York City, where they have an office and warehouse space for storing products before distribution to retailers worldwide, while the factory is located in Marche, Italy.

Throughout the 2010s, the “COMMON PROJECTS” Achilles became popular, offered for sale at over 200 retailers around the world. Over the years, the “COMMON PROJECTS” shoes have been appreciated in the world of shoes, becoming the top choice of influencers, such as Frank Ocean, Ellen DeGeneres, Nick Jonas, Alexander Skarsgard, and Drake; COMMEN PROJECTS have been awarded “Sneaker of the Week” twice by GQ magazine in 2011 and 2014.

To protect and promote its brand, the Complainant has been extensively using the “COMMON PROJECTS” denominations on all internet environments, including and not limited to the complainant’s official website http://commonprojects.com and its official accounts on the major social networks such as Facebook, Instagram, and Twitter.

The disputed domain names are the following:

Under the first Respondent, namely, Web Commerce Communications Limited.

COMPLAINANT:

A. PRELIMINARY PROCEDURAL MATTERS

As per the request for consolidation of the disputed domain names, the Complainant makes the following arguments.

The following disputed domain names <commonprojectsaustralia.com>, <commonprojectscanada.com>, <commonprojectsdubai.com>, <commonprojectsnorge.com>, <commonprojectsnz.com>, and <commonprojectssouthafrica.com> are currently registered with the registrar Key-Systems GmbH. Still, in the past, the disputed domain names abovementioned were registered with the registrar ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.

Furthermore, the abovementioned disputed domain names share the same address, which according to the available data on the Google Maps search engine, appears to be non-existent.

The Complainant argues that under the rules, the disputed domain names are subject to an evident common control, thus making the consolidation of the dispute equitable and procedurally efficient.

The Complainant provides the following elements to establish the existence of a common control:

- same gTLD of the disputed domain names, namely <.com>;

- the same period of registration: i.e. between May and July 2022;

- same products offered for sale;

- the same layout of the websites: same contact form; same advertising - in the sliding banner in the middle of the homepages – which promotes “Extra 5% off on your first order”; same icons in the upper right corner of the webpages and the same icons related to social networks accounts in the lower right corner of the webpages.

The latter elements compare the six above-mentioned disputed domain names for which the Second Respondent is “Claudia Lowe” and for some of the disputed domain names for which the First Respondent is “Web Commerce Communications Limited”.

- geographical indication in the domain names;

The Complainant further argues that as indicated in its website, “Web Commerce Communications Limited”, the Respondent and Registrant of forty-three disputed domain names is a privacy shield hiding the details of the real holder.

Moreover, the “Claudia Lowe” data prima facie is not related to a real identity, and the address in Germany is false. Therefore, the Complainant argues that such evidence is concrete and sufficient to prove that the disputed domain names are subject to a common control of a unique entity and asks the Panel for the consolidation of the 49 disputed domain names in a single dispute, thus referring hereinafter to a unique “Respondent”.

The Complainant argues that the disputed domain names, which all incorporate the trademark “COMMON PROJECTS” in their entirety, are under the control of a single individual or entity or, at least, reflective of a group of individuals acting in concert.

The Complainant noted that they share the following similarities:

- same gTLD of the disputed domain names, namely <.com>;

- the same period of registration: i.e. between May and July 2022;

- same Registrar: ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED, except for the following disputed domain names <commonprojectsaustralia.com>, <commonprojectscanada.com>, <commonprojectsdubai.com>, <commonprojectsnorge.com>, <commonprojectsnz.com>, and <commonprojectssouthafrica.com>. Previously, the disputed domain names were registered with the registrar ALIBABA.COM SINGAPORE ECOMMERCE PRIVATE LIMITED. Still, following to the cease and desist letter, the Respondent has changed the registrar to Key-Systems GmbH.

- same products offered for sale;

- same layout of the websites;

- geographical indication in the disputed domain names.

B. THE DISPUTED DOMAIN NAMES ARE IDENTICAL OR CONFUSINGLY SIMILAR

The disputed domain names incorporate the whole of the Complainant’s trademark “COMMON PROJECTS” and the fact that they include non-distinctive elements - such as “shoes”, “outlet”, and “online” – geographical indications – such as “aus” (for Australia), “Singapore”, “Ireland”, “Greece”, “us”, “India” - the gTLD .com does not affect the confusing similarity.

The Complainant argues that it is a well-established principle that disputed domain names that wholly incorporate trademarks, in particular ones as famous “COMMON PROJECTS”, are found to be confusingly similar for the purposes of the Policy. However, the disputed domain names may also contain descriptive, generic or geographical terms.

The combination of the trademark “COMMON PROJECTS” with generic and geographical terms could suggest improperly to consumers that the disputed domain names and corresponding websites might be controlled by the Complainant or with the Complainant’s authorization. Adding generic words to a trademark in the disputed domain names is also insufficient to negate the confusing similarity between a trademark and a domain name.

In light of the above, the Complainant argues the disputed domain names are certainly confusingly similar to the prior registered trademark in which the Complainant has rights under paragraph 4(a)(i) of the Policy.

C. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN RESPECT OF THE DISPUTED DOMAIN NAMES

In this case, the Respondent is not a licensee, authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark. Specifically, the Respondent is not an authorized reseller of the Complainant and has not been authorized to register and use the disputed domain names.

Upon information and belief, the Respondent is not commonly known by the disputed domain names as an individual, business, or other organization, and his family name does not correspond to "COMMON PROJECTS" or the disputed domain names.

The Respondent has not provided the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute.

The disputed domain names are redirected by the Respondent to websites where the Complainant’s trademarks “COMMON PROJECTS” are published and counterfeit products are offered for sale. Moreover, there is no disclaimer the Respondent’s lack of relationship with the Complainant. It is apparent that the Respondent's uses could be considered neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain names. The Complainant argues that such wilful conduct demonstrates, to the contrary, that the Respondent is not intended to use the disputed domain names in connection with any legitimate purposes. Moreover, the Respondent has not replied to the cease and desist letter providing a valid reason for the registrations of the disputed domain names confusingly similar to the Complainant’s trademark. This circumstance excludes the Respondent who could have rights or legitimate interests in respect of the disputed domain names.

In addition, the Complainant said that in light of the low prices at which the shoes are offered for sale on the websites corresponding to the disputed domain names, they appear to be counterfeit. As such, the disputed domain names cannot be deemed legitimate non-commercial or fair use without intent for commercial gain. The sale of counterfeit products is circumstantial evidence supporting the illegal Respondent activity and, consequently, the absence of no rights or legitimate interests in respect of the disputed domain names.

For all of the foregoing reasons, the Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy.

D. THE DISPUTED DOMAIN NAMES WERE REGISTERED AND ARE BEING USED IN BAD FAITH

As to the assessment of the Respondent’s bad faith at the time of registration, in light of the registration and intensive use of the trademarks “COMMON PROJECTS” since at least 2008, the advertising of the Complainant’s products worldwide, the Respondent could not have possibly ignored the existence of the Complainant’s trademark, confusingly similar to the disputed domain names.

The Complainant has many boutiques and a distribution network worldwide. The aforesaid trademark of the Complainant enjoys a worldwide reputation in the sector of shoes. The disputed domain names were registered between May and July 2022, years after the Complainant obtained its trademark registrations.

Furthermore, the actual knowledge of “COMMON PROJECTS” trademarks by Respondent at the time of the registration of the disputed domain names is demonstrated by the fact that the Respondent has offered for sale replicas of Complainant’s shoes also reproducing the trademark “COMMON PROJECTS” in the websites corresponding to the disputed domain names.

The fact that replicas of “COMMON PROJECTS” shoes are offered for sale on the websites corresponding to the disputed domain names indicates that the Respondent has been fully aware of the Complainant’s mark’s reputation and association with the Complainant and that his purpose in registering the disputed domain names, which incorporates the Complainant's trademark “COMMON PROJECTS”, was solely to capitalize on the reputation of Complainant's marks by diverting Internet users seeking products under the “COMMON PROJECTS” mark to its own commercial websites.

The use of the disputed domain names in connection with commercial websites where the Complainant’s trademarks are misappropriated and where counterfeit “COMMON PROJECTS” branded shoes are offered for sale indicates that the Respondent’s purpose in registering the disputed domain names was to capitalize on the reputation of the Complainant's trademarks by diverting Internet users seeking “COMMON PROJECTS” products to his website for financial gain, by intentionally creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of its web sites and/or the goods offered or promoted through said web sites, according to paragraph 4(b)(iv) of the Policy.

Moreover, on the websites corresponding to the disputed domain names, there is no disclaimer informing the users of the Respondent’s lack of relationship with the Complainant and the Respondent. In contrast, the Complainant’s official website “www.commonprojects.com” explains the following: “COMMON PROJECTS does not sell directly to the consumer at this time, nor is it associated with any sites outside of this domain name claiming to do so. To purchase COMMON PROJECTS please refer to the stockists' page for a list of all authorized COMMON PROJECTS retail partners”.

In light of the high discounts proposed to the Internet users and of the low prices of the shoes sold via the website corresponding to the disputed domain names, prima facie, the Respondent sells counterfeit goods, or the Respondent utilizes the low prices of the shoes as bait to obtain personal data or payments by the internet users without providing the goods.

Indeed, the Respondent offers for sale the Complainant’s products disproportionately below the market value: the same pair of shoes, i.e. “COMMON PROJECTS Sneakers Achilles”, in the Complainant’s website is offered for sale for EUR 378,00 instead, in the Respondent’s websites the shoes are offered for sale to EUR 79.68. Such conduct further proves that the items offered for sale are counterfeited and that the disputed domain names have been registered and used in bad faith.

Given the above, the Complainant submitted that the disputed domain names were registered and are being used in bad faith in satisfaction of paragraphs 4(a)(iii) and 4(b) of the Policy.

RESPONDENT

No administratively compliant Response was filed.

To the satisfaction of the Panel, the Complainant has shown that some of the disputed domain names, as described below, are identical or confusingly similar to the trademark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

To the satisfaction of the Panel, the Complainant has shown the Respondent to have no rights or legitimate interests in respect of some of the disputed domain names, as described below (within the meaning of paragraph 4(a)(ii) of the Policy).

To the satisfaction of the Panel, the Complainant has shown that some of the disputed domain names, as described below, have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

Before moving on to the dispute's substance, the Panel must weigh in on a procedural matter.

This matter is a request for the consolidation of multiple Respondents. For this, the Panel finds guidance under paragraph 4.11.2 of the WIPO Overview 3.0, namely, "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."

In this matter, the Complainant provided various arguments under element A above for PRELIMINARY PROCEDURAL MATTERS.

Based on the record, the Panel notes that all the disputed domain names have a similar pattern, namely a first element comprising "COMMON PROJECTS" without spaces plus another term that is usually the name or initials of a city, country or outlet/factory outlet, without spaces, utilizing the standard gTLD <.com>.

In addition, many of these disputed domain names were registered between May and July 2022, while some were registered on the same day.

Also, forty-three disputed domain names share the same Respondent, namely, Web Commerce Communications Limited, while the other six disputed domain names appear under the Respondent, Claudia Lowe. Nevertheless, other circumstances make it appear that the Respondents are related on the balance of probabilities. In addition to the ones mentioned before, all the disputed domain names shared the same registrar, except for the six disputed domain names which changed registrar after a cease & desist letter. 

In addition, it appears, based on the evidence on record, that the information provided as contact details is false, and the content across all the disputed domain names seems to repeat itself.

Finally, on the balance of probability and based on the evidence on record in conjunction, the Panel is left to conclude that the disputed domain names are indeed subject to common control. Accordingly, based on this, the Panel determines that the consolidation of Respondents would be fair and equitable to all parties. Hence, from this point on, the term Respondent shall be understood to refer to both Respondents in this matter.

The Panel is satisfied that all procedural requirements under UDRP have been met, and there is no other reason why it would be unsuitable for providing the Decision.

A. Identical or Confusingly Similar

Regarding the first step under this element, and as per evidence on record, the Complainant has owned several trademarks containing the term "COMMON PROJECTS" since at least 2008. Therefore, based on this, the Panel is satisfied that the Complainant has shown its trademark rights in "COMMON PROJECTS".

Turning now to the second step under this element, namely, assessing the confusing similarity between the disputed domain names and the trademarks, the Panel notes that the disputed domain names reproduce the trademark "COMMON PROJECTS" in its entirety, without spaces plus another term, which would fall under the category of slight changes. These small changes and/or additions are largely the name or initials of a city, country, or outlet/factory outlet, without spaces, as well as other terms utilizing the standard gTLD <.com>. 

These slight changes, namely through the addition of terms described above, are immaterial to assessing confusing similarities under the Policy.

Although the content of the website is generally disregarded for an assessment under the first element, in this instance, as per paragraph 1.15 of the WIPO Overview, which in this instance is persuasive to the Panel, the Panel takes note of the content of the website associated with the disputed domain names to confirm confusing similarity whereby it appears prima facie that the Respondent seeks to target a trademark through the disputed domain names, nevertheless, further analysis of said content will bear more detailed assessment under the second and third elements below, namely whether there may be legitimate co-existence or fair use, or an intent to create user confusion.

Based on this, the Panel finds the disputed domain names to be confusingly similar to the Complainant's trademark. As a result, the Panel determines that the Complaint has satisfied the Policy's first element set under paragraph 4(a)(I).

B. Rights or Legitimate Interests

Based on the evidence on record and acknowledging that the Respondent failed to produce any allegations or evidence necessary, the Panel must turn to the uncontested facts.

The uncontested facts indicate that:

1. The Respondent is not licensed or authorized to carry out any activity for the Complainant.
2. The Respondent is not affiliated with the Complainant.
3. The Respondent is not commonly known by the disputed domain names.
4. The Respondent has not acquired rights on the disputed domain names.
5. The Respondent has not provided evidence of the use of, or demonstrable preparations to use, of the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute.
6. The Respondent did not reply to the cease and desist letter but did change the registration details of some of the disputed domain names as an apparent consequence.
7. The Respondent redirects the disputed domain names to websites where the Complainant's trademarks, "COMMON PROJECTS," are published, and what appears to be counterfeit products appear to be offered for sale.

In the Panel's view, these assertions and the evidence attached are enough to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names (see 2.1 of WIPO 3.0 Overview).

These facts lead the Panel to conclude that the Respondent did not have rights or legitimate interests in the disputed domain names.

Consequently, the Panel determines that the Respondent has no rights or legitimate interests in the disputed domain names. Subsequently, the Complainant has fulfilled the second requirement set under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes that as per the evidence on record, the Respondent was more than likely aware of the Complainant and had the Complainant's trademarks in mind when registering the disputed domain names. As per the record, this is evidenced by the content of the websites associated with the disputed domain names, which replicate the Complainant's trademark and show prominently one of the Complainant's apparently most successful products for sale.

Although the Panel cannot determine if the products appearing on the websites of the disputed domain names are indeed counterfeit, under paragraph 2.13 of the WIPO 3.0 Overview, which is persuasive to the Panel, the products appear to be offered disproportionately below market value, a practice like this, can never confer rights or legitimate interests on a Respondent.

Per the evidence on record and balance of probability, the Panel is left with no other option than to conclude that the most likely intention of the Respondent was to intentionally attempt to attract, for commercial gain, Internet users to its website/disputed domain name, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and/or disputed domain name, as per illustrated under paragraph 3.1 of WIPO 3.0 Overview.

Accordingly, the Panel finds that the Complainant has satisfied the final element required under paragraph 4(a)(iii) of the Policy.

In light of the case's circumstances, based on the available records, the Panel finds that the Complainant has proven that the disputed domain name was registered and is used in bad faith according to paragraph 4(a)(iii) of the Policy.

D. Decision

For the preceding reasons and in concurrence with the provisions specified under Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders the transfer of the disputed domain names to the Complainant.