Decision for dispute CAC-UDRP-108684

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 owns numerous trademark registrations for MOON BOOT, including:

• International trademark (word) "MOON BOOT" no. 438194, registered since 25 May 1978 in class 25;
• European Union trademark (word) "MOON BOOT" no. 000516880, registered since 18 November 1999 in class 25;
• International trademark (word) "MOON BOOT" no. 917027, registered since 11 January 2007 in classes 18 and 25;
• International trademark (device) "MOON BOOT" no. 1774755, registered since 27 December 2023 in class 25;
• European Union trademark (word) "MOON BOOTS" no. 018669427, registered on 6 July 2022 in classes 9, 18 and 25.

The Complainant also owns several domain names incorporating the wording MOON BOOT, including <moonboot.com>, registered since 2 March 2011, which resolves to the Complainant's official website.

The above-mentioned trademark rights are hereinafter collectively referred to as the MOON BOOT Trademark.

The Complainant is Tecnica Group S.p.A., an Italian company active in the field of footwear and winter sports equipment. The Complainant manufactures, markets and sells footwear and sporting goods worldwide under several brands, including goods marketed under the MOON BOOT Trademark.

MOON BOOT products were first created in the early 1970s as après-ski wear. Inspired by the Apollo 11 moon landing and the shape of the astronauts' boots, the Complainant's founder, Giancarlo Zanatta, designed and developed the original MOON BOOT. Since then, more than 25 million pairs have been sold worldwide and the products have become iconic in the field of winter footwear.

The Complainant's products have received extensive international media coverage and have been promoted and worn by numerous celebrities, athletes and influencers. Over the years, the Complainant has collaborated with several well-known fashion and luxury brands. As a result, the MOON BOOT Trademark enjoys a significant reputation in connection with the Complainant's products.

The Complainant markets and sells products bearing the MOON BOOT Trademark through its official website and through an extensive network of distributors and retailers in numerous countries.

The Complainant also maintains an active presence on social media platforms, including Facebook, Instagram and Weibo, through dedicated accounts relating to products marketed under the MOON BOOT Trademark.

The disputed domain names were registered by the Respondent on January 2, 2026.

The evidence submitted by the Complainant shows that the disputed domain names previously resolved to websites dedicated to the sale of products bearing the MOON BOOT Trademark. The websites displayed similar layouts and offered for sale products presented as MOON BOOT products.

Following the discovery of the disputed domain names and their use, the Complainant sent cease and desist letters to the Respondent through the Registrar. The Respondent did not reply.

At the time of filing of the Complaint, the disputed domain names were inactive.

Following the submission of the Complaint, and upon request from the CAC, the Registrar confirmed that both disputed domain names are registered by the same underlying registrant.

The Respondent did not submit a Response.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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 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 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 UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The Complaint concerns two disputed domain names. The Complainant requested consolidation of the proceedings on the ground that both disputed domain names are under common control.

The Panel notes that the disputed domain names were registered on the same date with the same Registrar and were used in connection with websites displaying similar layouts and offering products presented as products bearing the MOON BOOT Trademark.

More importantly, following the submission of the Complaint, the Registrar confirmed that both disputed domain names are registered by the same underlying registrant.

In these circumstances, the Panel is satisfied that the disputed domain names are under common control. The Panel further considers that consolidation is fair and procedurally efficient and does not prejudice the Respondent.

Accordingly, the Panel grants the Complainant's request for consolidation.

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to succeed in the administrative proceeding:

(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(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 by the Respondent in bad faith.

I. COMPLAINANT'S RIGHTS AND THE CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAMES TO THE COMPLAINANT'S MARK

The first element of the Policy serves essentially as a standing requirement.

The test for identity or confusing similarity involves a straightforward, reasoned comparison between the complainant's trademark and the disputed domain name. This typically entails a side-by-side evaluation of the domain name and the textual elements of the relevant trademark to determine if the mark is recognizable within the domain name. When a domain name fully incorporates a trademark, or at least a dominant feature of it is evident in the domain name, the domain name is generally deemed confusingly similar to the mark for the purposes of the first element.

The top-level domain (TLD) is usually disregarded in determining identity or similarity, as it is simply a technical aspect of registration.

The Complainant has established that it has rights in the MOON BOOT Trademark.

The disputed domain name <moonbooteu.com> incorporates the MOON BOOT Trademark in its entirety, merely adding the geographical abbreviation "eu". The addition of such a geographical term does not prevent a finding of confusing similarity.

The disputed domain name <moonbigsaleca.com> does not reproduce the MOON BOOT Trademark in its entirety. However, it incorporates the term "moon", corresponding to the first element of the MOON BOOT Trademark, together with the descriptive terms "big" and "sale" and the geographical abbreviation "ca". The Panel further notes that the disputed domain name previously resolved to a website prominently displaying the MOON BOOT Trademark and offering products presented as MOON BOOT products. While website content is not a substitute for the comparison between a trademark and a domain name, it may, in appropriate circumstances, support a finding of confusing similarity. In the circumstances of the present case, the Panel finds that Internet users would likely perceive the disputed domain name as referring to the Complainant and its MOON BOOT Trademark.

Accordingly, the Panel finds that the Complainant has proven the first element of paragraph 4(a) of the Policy and that the disputed domain names are confusingly similar to the MOON BOOT Trademark.

II. THE RESPONDENT'S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN THE DISPUTED DOMAIN NAMES

Under paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Although the overall burden of proof rests with the Complainant, panels have consistently recognized that proving a respondent's lack of rights or legitimate interests may result in the difficult task of proving a negative. Accordingly, where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names.

The Complainant asserts that it has not authorized, licensed or otherwise permitted the Respondent to use the MOON BOOT Trademark or to register domain names incorporating or referring to the MOON BOOT Trademark.

There is no evidence that the Respondent is commonly known by the disputed domain names.

The evidence submitted by the Complainant shows that the disputed domain names previously resolved to websites displaying the MOON BOOT Trademark and offering for sale products presented as MOON BOOT products. The websites used similar layouts and were clearly intended to create an association with the Complainant and its products. Such use cannot confer rights or legitimate interests on the Respondent. The Panel finds that the Respondent was not using the disputed domain names in connection with a bona fide offering of goods or services. Nor does the record support a finding of legitimate noncommercial or fair use.

The Panel further notes that, at the time of filing of the Complaint, the disputed domain names did not resolve to active websites. In the circumstances of this case, such passive holding does not support a finding of rights or legitimate interests on the part of the Respondent.

The Respondent did not reply to the Complainant's cease and desist letters and has not submitted a Response in these proceedings. Accordingly, the Respondent has failed to rebut the Complainant's prima facie case or to provide any explanation for its registration and use of the disputed domain names.

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

III. THE REGISTRATION AND USE OF THE DISPUTED DOMAIN NAMES IN BAD FAITH

Under paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain names have been registered and are being used in bad faith.

The Complainant has sufficiently demonstrated rights in the prior and well-known MOON BOOT Trademark, which has been registered and used since 1978. The Panel has already found that the disputed domain names are confusingly similar to the MOON BOOT Trademark.

The Panel notes that the MOON BOOT Trademark enjoys a significant reputation in connection with the Complainant's products. Such reputation has also been recognised in previous UDRP decisions involving the MOON BOOT Trademark. In Tecnica Group S.p.A. v. Web Commerce Communications Limited (Client Care), CAC Case No. 104900, the panel referred to the MOON BOOT Trademark as a well-known trademark and found bad-faith registration and use of numerous domain names incorporating the MOON BOOT Trademark.

UDRP panels have consistently held that the mere registration of a domain name identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity may, in itself, constitute evidence of bad faith registration.

In the present case, the Respondent is not affiliated with the Complainant and there is no evidence that the Respondent has been authorized to use the MOON BOOT Trademark. Moreover, the evidence submitted by the Complainant shows that the disputed domain names previously resolved to websites displaying the MOON BOOT Trademark and offering for sale products presented as MOON BOOT products. The websites used similar layouts and were clearly intended to create an association with the Complainant and its products.

In these circumstances, the Panel finds that the Respondent was clearly aware of the Complainant and its trademark rights when registering the disputed domain names. It is inconceivable that the Respondent registered the disputed domain names without knowledge of the Complainant and the MOON BOOT Trademark.

The Panel further finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the MOON BOOT Trademark as to the source, sponsorship, affiliation or endorsement of the websites and of the products offered therein. Such conduct constitutes evidence of registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The Respondent did not reply to the Complainant's cease and desist letters and did not participate in the present proceedings. The Panel further notes that the address provided by the Respondent appears not to exist. The provision of inaccurate contact details constitutes an additional indication of bad faith.

The Panel also notes that, at the time of filing of the Complaint, the disputed domain names no longer resolved to active websites. However, the apparent inactivity of a domain name does not prevent a finding of bad faith. As established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the passive holding of a domain name may, in appropriate circumstances, constitute bad faith use.

Having regard to the reputation of the MOON BOOT Trademark, the Respondent’s knowledge of the Complainant’s rights, the prior use of the disputed domain names for websites displaying the MOON BOOT Trademark and offering products presented as MOON BOOT products, the Respondent’s failure to reply to the cease and desist letters, the apparent provision of inaccurate contact details, the absence of any Response, and the lack of any plausible good-faith use of the disputed domain names, the Panel finds that the current passive holding of the disputed domain names does not prevent a finding of bad faith.

Accordingly, the Panel concludes that the disputed domain names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.