Decision for dispute CAC-UDRP-108319

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

Complainant states that it “is the owner of SALOMON trademarks registered and used all over the world, including in Asia.”  In support thereof, Complainant has provided documentation for a number of trademarks, including Int’l Reg. No. 375807 for SALOMON (registered November 24, 1970) for use in connection with, inter alia, “sportswear, in particular ski clothing, boots, shoes and ski boots” (as translated from French); Int’l Reg. No. 489108 for SALOMON (registered July 19, 1984) for use in connection with, inter alia, “pitons, carabiners, compression pitons, anchors, shackles, ascenders, descenders and brakes” (as translated from French); and Int’l Reg. No. 526127 for SALOMON (registered March 22, 1988) for use in connection with, inter alia, “footwear, especially boots, shoes, slippers, mountain and ski or après-ski shoes, their inner liners, overboots” (as translated from French).  These registrations are referred to herein as the “SALOMON Trademark.”

Complainant states that it is “an outdoor sports equipment manufacturing French Company created by the Salomon’s Family on 1947, in Annecy, France”; that it “produces products for various sports markets, including trail running, hiking, climbing, adventure racing, skiing, and snowboarding in over 40 countries on five continents”; and that it “owns many domain names including the distinctive wording SALOMON such as a large presence in Asia, including the domain name <salomon.com> registered since 1995-01-11.”

The Disputed Domain Name was created on May 24, 2025, and, according to the Complaint, “redirects to an online shop template selling discounted clothing and accessories under the SALOMON brand.”  In support thereof, Complainant has provided a screenshot from a website associated with the Disputed Domain Name, which advertises shoes for sale under the SALOMON brand.

Complainant contends, in relevant part, as follows:

Paragraph 4(a)(i): Complainant states that the Disputed Domain Name is confusingly similar to the SALOMON Trademark because the Disputed Domain Name contains the SALOMON Trademark “in its entirety” and “[t]he addition of the geographic sig[n] ‘TW’ for Taiwan at the end of the domain name <salomon-tw.com> and the gTLD ‘.COM’ are not sufficient elements to escape the finding that the domain name is confusingly similar to the Complainant’s trademarks SALOMON.”

Paragraph 4(a)(ii): Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not known as the disputed domain name”; “the Respondent is not affiliated with nor authorized by the Complainant in any way”; “Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark SEZANE, or apply for registration of the disputed domain names by the Complainant” (the Panel assumes that Complainant intended to refer to the SALOMON Trademark, not “Complainant’s trademark SEZANE”); and “Respondent used the disputed domain name to disrupt Complainant’s business and to attract users by impersonating the Complainant.”

Paragraph 4(a)(iii): Complainant states that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent is attempting to pass itself off as the Complainant by using its registered trademarks SALOMON® in violation of Policy”; “the disputed domain name is redirecting to online stores that competed with the products offered by the Complainant”; and “[u]sing a domain name in order to offer competing services is often been held to disrupt the business of the owner of the relevant mark is bad faith.”

No administratively compliant response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name is 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 UDRP).

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 Name (within the meaning of paragraph 4(a)(ii) of the UDRP).

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

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.

Identical or Confusingly Similar: Paragraph 4(a)(i)

The trademark citation and documentation provided by Complainant are sufficient to establish that Complainant has rights in the SALOMON Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to these trademarks, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “salomon-tw”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”  WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”), section 1.11.1.

Here, the Disputed Domain Name contains the SALOMON Trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.1: “[I]n cases where a domain name incorporates the entirety of a trademark…, the domain name will normally be considered confusingly similar to that mark.”

As to the addition of the letters “nl” (an abbreviation for “Taiwan”), section 1.8 of WIPO Overview 3.1 says: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

Accordingly, the Panel finds that Complainant has proven the first element of the Policy. 

Rights or Legitimate Interests: Paragraph 4(a)(ii)

Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not known as the disputed domain name”; “the Respondent is not affiliated with nor authorized by the Complainant in any way”; “Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark SEZANE, or apply for registration of the disputed domain names by the Complainant” (the Panel assumes that Complainant intended to refer to the SALOMON Trademark, not “Complainant’s trademark SEZANE”); and “Respondent used the disputed domain name to disrupt Complainant’s business and to attract users by impersonating the Complainant.”

WIPO Overview 3.1, section 2.1, states: “Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Panel finds that Complainant has established its prima facie case and, without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the UDRP.

Registered and Used in Bad Faith: Paragraph 4(a)(iii)

Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has 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 complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location.

Creating a website using a domain name containing Complainant’s trademark to sell the same goods identified by the SALOMON Trademark may create a likelihood of confusion.  Complainant does not specify whether the website using the Disputed Domain Name is actually selling Complainant’s goods, whether it is selling counterfeit versions of Complainant’s goods, whether it is simply advertising but delivering any goods at all, or something else.  Nevertheless, using the SALOMON Trademark to advertise for sale the same goods associated with the SALOMON Trademark, without permission from Complainant or disclosure of its relationship (or lack thereof) with Complainant constitutes bad faith.  See, e.g., Reebok International Limited v. Web Commerce Communications Limited, Client Care, WIPO Case No. D2022-2738 (finding bad faith where “Respondent’s Website features Complainant’s… Mark prominently throughout the website to sell footwear using photographs that look similar to the photographs that Complainant uses to sell footwear on its website”); and “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Domain Administrator, See PrivacyGuardian.org / Stephan Naumann, WIPO Case No. D2020-0379 (finding bad faith where disputed domain name was used in connection with a website that “offered a variety of footwear bearing the [complainant’s] trademark for online sale at discounted prices without a disclaimer”).

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.