Decision for dispute CAC-UDRP-108238

According to Article 3(c) of Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the Complaint may relate to more than one domain name, provided that the disputed domain names are registered by the same domain-name holder. According to Article 10(e) of Rules a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.

The Complainant requests to consolidate its claims against the registrants of the disputed domain names notwithstanding that the registrant details are different, on the grounds that both the disputed domain names are subject to common control and that it is equitable and procedurally efficient to consolidate the proceedings. The Complainant relies on the following factors that both the disputed domain names have in common, namely: (i) same Hosting Provider: Team Internet Ag; (ii) same Registrar: Hosting Concepts B.V.; (iii) same date of registration, i.e. November, 10, 2022; (iv) sharing the presence in each domain name of country names after the trademarked denomination "moonboot"; (v) same products offered for sale; (vi) same templates of the websites corresponding to the disputed domain names. 

In the light of the above Complainant considerations, and notwithstanding the clear existence of two different registrants (Respondents), the Panel considers that both the disputed domain names are under the same common control. 

In previous cases similar to the one at hand the Panel has decided to order the consolidation (see, for example, Tod's SPA v Web Commerce Communications Limited; CAC Case No. 103815 and D. Jacobson & Sons Limited v Marcel Baum; CAC Case No. 104399) and the Panel therefore agrees to the Complainant’s request, even considering that, due to the circumstances of the present case, it is equitable and procedurally efficient to consolidate the proceedings. 

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

1) The Complainant has demonstrated rights through registration and use on the MOON BOOT trademark. The Panel finds that the disputed domain names are confusingly similar to the MOON BOOT trademark of the Complainant. Actually, both the disputed domain names incorporate said trademark of the Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525). Furthermore, the addition of geographic terms (slovenia/romania) does not prevent a finding of confusing similarity between the disputed domain names and the MOON BOOT trademark. In addition, as a mere technical part of the disputed domain name, the gTLD “.com” may be disregarded in determining confusing similarity. Accordingly, the Complainant has, to the satisfaction of the Panel, shown that the disputed domain names are confusingly similar to trademark in which the Complainant has rights. The Complainant therefore succeeds on the first element of the Policy.

2) The Complainant demonstrated that both the websites to which the disputed domain names are linked allegedly offer for sale authentic merchandise bearing the MOON BOOT trademark. The Complainant clearly considers that Respondent has the hope and the expectation that Internet users looking for the brand MOON BOOT will be directed to the websites corresponding to the disputed domain names. The Panel finds that said activity, of course, does not provide a legitimate interest in the disputed domain names under the Policy. Furthermore, the Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed domain names as it was never authorized to use the MOON BOOT trademark by the Complainant. The Respondent, in the absence of any Response, has not shown any facts or element to justify prior rights or legitimate interests in the disputed domain names. The Complainant therefore succeeds on the second element of the Policy.

3) 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 disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names 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 disputed domain name; or

(ii) the Respondent has registered the disputed domain names 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 disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, 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 Respondent registered the disputed domain names decades after the use and registration of the MOON BOOT mark by the Complainant. In consideration of the reputation achieved by MOON BOOT it is clear that the Respondent was surely aware of the Complainant trademark when he/she registered the domain names in dispute. Moreover, the Respondent appears to have attempted to benefit commercially from the appropriation of the MOON BOOT mark in the disputed domain names. The use of the famous mark MOON BOOT, well-known worldwide in the après-ski shoes sector, for selling après-ski shoes, clearly indicates that the disputed domain names were chosen by the Respondent to take advantage of the Complainant´s marks reputation. This finding leads to the obvious conclusion that the disputed domain names have been registered in bad faith (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot - WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian - WIPO Case No. D2009-0113; AXA S.A. v. P.A. van der Wees - WIPO Case No. D2009-0206; BHP Billiton Innovation v. Ravindra Bala - WIPO Case No. D2008-1059).

The Panel also finds that, by linking the disputed domain names to websites offering for sale alleged MOON BOOT items, the Respondent has intentionally attempted to attract Internet users to its websites for commercial gain, by causing a likelihood of confusion with the trademark MOON BOOT as to the source, sponsorship, affiliation or endorsement of its websites and the products promoted therein. The conduct described above clearly falls within paragraph 4(b)(iv) of the Policy (Triumph International Vietnam Ltd v. Tran Quoc Huy - WIPO Case No. D2017-0340).

Finally, the Complainant insists that bad faith has to be considered also due to the Respondent's lack of reaction to the cease-and-desist letter sent by the Complainant. In this respect the Panel confirms that the Respondent's failure to respond to the Complainant contentions and as a result to provide any evidence whatsoever of any good faith registration and use of the disputed domain names is additional indication of bad faith

In consideration of the above, the Panel concludes that the Respondent registered and is using the disputed domain names in bad faith. The Complainant therefore succeeds also on the third element of the Policy.