Decision for dispute CAC-UDRP-105047

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant has adduced evidence that it owns the following trademarks in relation to the mark "KARHU", which remain valid in the following Nice Classification classes:

- EU trademark No. 006955645 (figurative mark), registered on 10 July 2009 in Nice Classification List Classes 18, 25 and 28;

- EU trademark No. 006954903 (word mark), registered on 15 July 2010, in Classes 18, 25 and 28;

- US trademark No. 0907891 (combined figurative and work mark), registered on 16 February 1971 in Classes 10, 18, 20, 22, 25 and 28;

- US trademark No. 3718764 (figurative mark), registered on 1 December 2009 in Classes 22, 25 and 39;

- Canadian trademark No. TMA700488 (figurative mark), registered on 7 November 2007 in Classes 18, 25 and 28;

- Mexican trademark No. 1742461 (combined figurative and work mark), registered on 12 April 2017 in Class 25;

- Singapore trademark No. T0809836E (combined figurative and work mark), registered on 16 October 2008 in Class 25;

- Australian trademark No. 319771 (word mark), registered on 6 July 1978 in Classes 18, 25 and 28.

In addition, the Complainant registered the domain name <karhu.com> on 12 April 1999.

The Respondent registered the following twelve disputed domain names on the following dates:

- <karhuamsterdam.com> 2 March 2022;

- <karhufranceshop.com> 8 February 2022;

- <karhutrainerssaleuk.com> 22 January 2022;

- <karhuhungary.com> 17 May 2021;

- <karhuromania.com> 17 May 2021;

- <karhumexico.com> 16 May 2021;

- <karhu-australia.com> 14 May 2021;

- <karhuscarpe.com> 11 May 2021;

- <karhunorge.com> 11 May 2021;

- <karhuschuheschweiz.com> 11 May 2021;

- <karhucanada.com> 10 May 2021;

- <karhusneakers.com> 10 May 2021.

The Complainant, Karhu, designs, sources, distributes, markets and sells sportswear. Its company has done so since 1916. The Complainant re-branded to Karhu (which means "bear" in Finnish) in 1920. The Complainant specializes today in the creation of sneakers and other sports apparel, which it commercializes through its <karhu.com> domain name. The Complainant is well-known for innovation in the sneakers market and has become one of the most recognized brands in this sector. Its figurative trademark logo depicts a bear.

The Respondent registered nine of the twelve disputed domain names between 10 and 17 May 2021. The other three were registered at the beginning of 2022. All the disputed domain names incorporate the “KARHU” word trademark in its entirety. The Respondent added various country names or generic terms to them, examples being<karhuschuheschweiz.com, where “Schuhe” means shoes and “Schweiz” Switzerland in German, and <karhuscarpe.com> where "scarpe" means shoes in Italian.

Screenshots adduced by the Complainant show that its protected logo and word trademarks are used on the websites established by the Respondent associated with the disputed domain names. As on the Complainant's websites, the Respondent has implemented on its ones a slider at their head, in the same colour as on the Complainant’s website. Only the placing of the slider differs from the Complainant's design. It is placed directly above the Complainant’s logo on the Respondent's sites. The Respondent's sites exhibit a free-delivery announcement, again as on the Complainant's site, while the favicon appearing to internet users in the address bar with the Complainant's website has been copied so as to appear with the Respondent's sites. Fake copyright notices adapt the Complainant's trademark to the names used in the disputed domain names.

The Respondent employed a privacy protection service upon registration of all the disputed domain names.

COMPLAINANT:

In this case, the Respondent registered a series of domain names all incorporating the Complainant’s trademarks plus an additional descriptive or geographic term. The Respondent did so in order to create confusing similarity with the Complainant's protected brand in the Complainant's field of commercial operation. The Respondent thereby registered and is using the disputed domain names solely to impersonate the Complainant for commercial gain in violation of the Complainant's rights. As such there is no doubt that Respondent is a "cybersquatter" in respect of all the disputed domain names. There is no basis whatsoever in this case for the Respondent itself having rights or a legitimate interest in the disputed domain names, while the facts show the Respondent's clear bad faith, in circumstances familiar from numerous cited past Panel decisions.

The elements required by the Policy are therefore all present in this case.

RESPONDENT:

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is identical or confusingly similar to trademarks 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 that 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 the UDRP were met and that there is no other reason why it would be inappropriate to provide a decision.

The Panel notes that, in its résumé of the Parties' contentions, references to views of previous Panels contained in the Amended Complaint have not been repeated.

The Panel finds that:

- The Complainant has adduced sufficient evidence of its own rights and of the confusing similarity of all the disputed domain names with the Complainant’s trademarks and its domain name incorporating them. The first element of the UDRP three-part test is therefore fulfilled.

- The Registrar Verification in this case has disclosed no meaningful details about the identity of the Respondent, who, instead of registering the disputed domain names under his or her name, employed the name of either a domain name registrar or that of an online privacy protection service. The Case File also indicates that the Respondent registered, instead of his or her actual physical address, the address of a famous mosque in Kuala Lumpur. There is consequently only nonsense to consider when determining if the Respondent, for the purposes of the second UDRP element, has any rights or a legitimate interest. The finding here must therefore be negative.

- The Respondent’s transparent aim with its registration and use of the series of disputed domain names concerned in this proceeding was cybersquatting by impersonating the Complainant on different markets internationally. The evidence is equally clear that this was done in order illegitimately to extract commercial value from the reputation enjoyed by the Complainant and its products. Such conduct unambiguously constitutes bad faith, which is the final UDRP element the Complainant must show.

All UDRP requirements having been fulfilled, the Panel orders transfer of the twelve disputed domain names in this case to the Complainant.