Decision for dispute CAC-UDRP-107927

The Panel is unaware of any other pending or decided legal proceedings in respect of the domain names <vaude-de.com>, <vaudeshop.com>, <vaudedon-de.com>, <vaudedes.com>, <vaudeushopon.com>, <vaudeuonline-de.com>, and <vaudedshop.com> (collectively, 'the Disputed Domain Names').

The Complainant, VAUDE Sport GmbH & Co. KG, is the holder of the following registered trade marks, amongst others:

• International trade mark registration no. 1111326, registered on 10 February 2012, designating inter alia the United States of America ('the USA'), for the figurative mark VAUDE, in classes 18, 20, 22, and 25 of the Nice Classification;

• EU trade mark registration no. 010133981, registered on 12 January 2012, for the figurative mark VAUDE, in classes 1, 9, 11, 18, 20, 21, 22, 25 and 28 of the Nice Classification; and

• USA trade mark registration no. 4333271, registered on 14 May 2013, for the figurative VAUDE, in classes 18, 20, 22, and 25 of the Nice Classification.

(Collectively or individually referred to as 'the Complainant's trade mark' or 'the trade mark VAUDE').

The Disputed Domain Names were registered on the following dates:

At the time of writing, the Disputed Domain Names resolve to:

(i) online stores purporting to sell VAUDE products; and

(ii) other inactive or deceptive websites (collectively, 'the Respondent's websites').

The registrants of the Disputed Domain Names are collectively referred to as 'the Respondent'.

A. Complainant's Factual Assertions

The Complainant, founded in Germany in 1974, is a leading manufacturer of mountain and sports equipment. The trade mark VAUDE is associated with quality, innovation, and sustainability.

B. Respondent's Factual Assertions

The Respondent has failed to submit any Response. The Panel therefore proceeds on the unchallenged evidence before it.

A. Complainant

A.1 Preliminary Issue – Application of Consolidation

The Complainant requests consolidation of its claims against the different registrants of the Disputed Domain Names into a single proceeding.

The Disputed Domain Names are held by the following individuals/entities:

Consolidation may be appropriate under paragraphs 3(c) or 10(e) of the UDRP Rules where the Complainant demonstrates that the domain names are under common control, and where such consolidation would ensure efficiency and fairness.  

The Complainant relies on several factors:

i. Alter ego relationships: evidence of common administrative or technical contacts, suggesting a single beneficial owner;

ii. Fictitious registrations: registrations by one entity under multiple identities;

iii. Website similarities: common design, content, and layout across the associated websites;

iv. Incorporation of the trade mark: consistent use of the trade mark VAUDE with descriptive terms, indicating coordinated intent to mislead consumers; and

v. Failure to respond: the registrants of the Disputed Domain Names have not contested the Complaint.

The Complainant contends that the Disputed Domain Names share the same registrar, hosting provider, and IP address, and were registered within a narrow timeframe. They also share the same registrant country (USA) and exhibit substantial similarities in appearance, structure, and function.  

For these reasons, the Complainant requests that the Disputed Domain Names are named registrants be consolidated in a single proceeding.

A.2 Substantive grounds

A.2.1 The Disputed Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights

The Complainant submits that the Disputed Domain Names incorporate the trade mark VAUDE in its entirety, together with descriptive or geographical terms such as 'shop', 'online', or 'de'. These additions do not diminish similarity but, instead, reinforce the association with the Complainant. Established UDRP precedent confirms that the inclusion of a trade mark within a domain name gives rise to confusing similarity, and the addition of a Top-Level Domain ('the TLD') <.com> is irrelevant for the purposes of comparison.

A.2.2 The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names

The Complainant states that the Respondent is neither authorised nor licensed to use the trade mark VAUDE and has no rights or legitimate interests in the Disputed Domain Names. The Respondent is not commonly known by the Disputed Domain Names and has made no bona fide preparations to use them prior to notice of this proceeding. The absence of a Response further supports the lack of any legitimate interest.

A.2.3 The Respondent registered and is using the Disputed Domain Names in bad faith

The Complainant contends that the trade mark VAUDE predates the registration of the Disputed Domain Names by more than a decade. The Respondent was therefore clearly aware of the Complainant's rights. The inclusion of the trade mark VAUDE with terms such as 'shop' or 'online' suggests an intent to exploit the Complainant's goodwill and mislead consumers into believing the Respondent's websites are affiliated.

The Complainant also submits that the Respondent's websites display purported VAUDE products at unrealistically low prices, likely indicating counterfeit goods. The Respondent's conduct therefore constitutes bad faith registration and use.

A.2.4 Relief sought

The Complainant seeks the transfer of the Disputed Domain Names. 

B. Respondent

No Response was filed. 

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

1. Complainant's Application for Consolidation

The Complainant seeks consolidation of its claims against multiple registrants into a single proceeding.

The Panel has carefully considered the record, the UDRP Rules, and paragraph 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ('the WIPO Jurisprudential Overview 3.0').

Under Rules 10(b) and 10(c) of the UDRP Rules, the Panel must balance procedural efficiency with equality of treatment and fairness to all parties. Consolidation will be appropriate where the domain names appear to be subject to common control.

The Panel notes the following common features for each Domain Name:

All Disputed Domain Names were registered within a few weeks, share the same registrar and hosting provider, employ the same TLD <.com>, and incorporate the trade mark VAUDE in their strings. The registrants are all based in the USA, and the associated e-mail addresses follow a similar format ending in '@hotmail.com'.

The Panel observes that one of the Domain Names (<vaudedes.com>) is registered to an undisclosed registrant. However, in view of the overall factual matrix – including the timing, registrar, and technical similarities – the Panel considers it reasonable to infer that this Domain Name is likewise under the same or related control.

The Panel finds it implausible that these registrations occurred independently and concludes that the Disputed Domain Names are under common control. Accordingly, the Complainant’s application for consolidation is granted.

2. Procedural compliance

All procedural requirements have been satisfied. The matter is properly before the Panel.

A. Applicable Legal Framework

Pursuant to Rule 15 of the UDRP Rules, the Panel shall decide the dispute based on the statements and documents submitted, in accordance with the UDRP Policy, the UDRP Rules, and any applicable rules and principles of law.

Under paragraph 4(a) of the UDRP Policy, the Complainant must establish on the balance of probabilities that:

i. The Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

ii. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

iii. The Disputed Domain Names have been registered and are being used in bad faith.

B. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in the registered trade mark VAUDE since at least 2012. Each of the Disputed Domain Names incorporates the trade mark VAUDE in its entirety. The addition of generic terms 'shop', 'online', random keyboard letters ('d', 's', and 'on'), or the geographical abbreviation 'de' (for Deutschland, or Germany) does not affect the recognisability of the Complainant's trade mark.  Moreover, the TLDs are typically disregarded by UDRP panels under this element of the UDRP Policy. As is well established, the TLD <.com> is immaterial for the purposes of comparison.

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the UDRP Policy.

C. Rights or Legitimate Interests

The Complainant denies any authorisation for the Respondent’s use of the trade mark VAUDE. There is no evidence that the Respondent has been commonly known by the Disputed Domain Names or has made any bona fide preparations for legitimate use.

The record shows attempts by the Respondent to impersonate the Complainant by offering purported VAUDE products without authorisation. The Respondent's failure to respond further supports the absence of any rights or legitimate interests.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the UDRP Policy.

D. Registered and Used in Bad Faith

The Complainant's trade mark long predates the registration of the Dispute Domain Names and enjoys a substantial reputation in the mountain and sports equipment industry. The Complainant's rights are also protected in the USA, where the Respondent appears to be based. The Panel considers it inconceivable that the Respondent was unaware of these rights.

The websites associated with <vaude-de.com> and <vaudedon-de.com> display unauthorised products under the trade mark VAUDE, without any disclosure of a relationship with the Complainant. This behaviour amounts to impersonation and falls squarely within paragraph 4(b)(iv) of the UDRP Policy.

As to the remaining Disputed Domain Names, which are inactive or deceptive, the Panel applies the principles of passive holding. Having regard to (i) the distinctiveness of the trade mark VAUDE, (ii) the Complainant's longstanding use of <vaude.com>, (iii) the absence of any credible explanation from the Respondent, and (iv) the implausibility of any good-faith use, the Panel concludes that the registration and continued holding of these Disputed Domain Names are likewise in bad faith.

E. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the UDRP Policy and Rule 15 of the UDRP Rules, the Panel orders that the Disputed Domain Names be transferred to the Complainant.