{
    "case_number": "CAC-UDRP-101692",
    "time_of_filling": "2017-10-04 08:55:48",
    "domain_names": [
        "TWMERRELL.COM"
    ],
    "case_administrator": "Aneta Jelenová (Case admin)",
    "complainant": [
        "Wolverine World Wide Inc."
    ],
    "complainant_representative": "Mr. Stephen David Lott (Seyfarth Shaw LLP)",
    "respondent": [
        "Pumo Network Digital Technology Co., Ltd"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant is an American footwear company founded in 1981.  The Complainant owns over 300 trade mark and service mark registrations around the world, including in Taiwan, which incorporate MERRELL and MERRELL-formative marks in connection with, among other things, footwear and retail store services featuring footwear. The Complainant's MERRELL trade marks have been in use since at least 1982 in the United States in connection with hiking and climbing boots. The Complainant was granted its first Taiwanese trade mark registration for MERRELL in connection with footwear in 1995 (Reg. No. 688035).\r\n\r\nThe Complainant's main website is available at www.merrell.com (the domain name <merrell.com> has been registered to the Complainant since 1995). The Complainant also offers its products at the website www.merrell.com.tw (the domain name <merrell.com.tw> has been registered to the Complainant since at least 2002). \r\n\r\nThe Respondent appears to be a company providing web hosting and domain registration services.  \r\n\r\nThe disputed domain name <twmerrell.com> (the Domain Name) was registered on 23 May 2014.  At the time of filing of the Complaint, it was resolving to a website offering footwear for sale, including the Complainant's products as well as products of the Complainant's competitors. ",
    "other_legal_proceedings": "The Panel is not aware of any other legal proceedings that are pending or decided and which relate to the disputed domain name. ",
    "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant asserts that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The Complainant states that the Domain Name is confusingly similar to the Complainant's trade mark as it contains the Complainant’s MERRELL mark in its entirety. The Complainant submits that the letters “TW” in the Domain Name are merely geographically descriptive of Taiwan and that it normally indicates the trade mark owner operates the website for activities in that country.  The Complainant therefore submits that because “TW” merely describes the location in which the Respondent purports to sell the Complainant’s goods, and because the inclusion of “TW” will only serve to mislead consumers into believing the Complainant uses the website for its activities in Taiwan, the Domain Name is confusingly similar to Complainant’s MERRELL trade mark.\r\n\r\nThe Complainant further asserts that the Respondent has no rights or legitimate interests in the Domain Name.  In this regard, the Complainant states that no express or implied license has ever been granted to Respondent to use the Complainant’s MERRELL trade mark. The Complainant also asserts that the Respondent is not and has never been an authorized seller or distributor of the Complainant’s products, including those bearing the MERRELL trade mark.\r\n\r\nThe Complainant states that the Respondent is not commonly known by the name “Merrell” in accordance with paragraph 4(c)(ii) of the Policy. In this regard, the Complainant highlights that the Respondent’s detail in the WhoIs gives no indication that the Respondent has ever been known by the name “MERRELL” or by any name or trade mark similar to or related in any way to the MERRELL Marks.\r\n\r\nThe Complainant also asserts that the Respondent’s use of the Domain Name is clearly commercial because the website offers the Complainant’s goods for sale.  Furthermore, it argues that such use cannot be characterized as fair because the Respondent’s website prominently displays the Complainant’s MERRELL trade mark which is likely to mislead consumers into believing that they have reached the Complainant's website or that the website is affiliated with or authorized by Complainant when such is not the case.  The Complainant states that the Respondent's actions evidence the Respondent’s intent to misleadingly divert consumers for commercial gain. The Complainant suggests that the Respondent is passing itself off as the Complainant and that that cannot be considered evidence of a bona fide offering of goods or services.  The Complainant also states that even in the case of legitimate independent sellers, prior panels have found that an accurate disclosure of the registrant’s relationship with the trade mark owner is one of several “minimum” requirements for a bona fide offering. See, e.g. Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).   The Complainant submits that the Respondent is not a recognized seller of the Complainant’s products and, furthermore, the Respondent has deliberately failed to represent its relationship with the Complainant. Therefore, the Complainant argues that the Respondent's offering of goods or services is not bona fide.\r\n\r\nThe Complainant asserts that the Domain Name was registered and is being used in bad faith. In this regard, the Complainant argues that by using the Domain Name, the Respondent has intentionally attempted to attract potential customers of the Complainant’s MERRELL products to its website for commercial gain, in accordance with paragraph 4(b)(i) of the Policy.  Furthermore, the Complainant asserts that the Respondent's website states that it is owned by “MERRELL 特賣會 Licensing LLC,” which falsely suggests that the Respondent’s use is under license from the Complainant, or that the Respondent has the right to license the Complainant's trade mark, neither of which are true. The Complainant also underlines that the Respondent also displays the MERRELL trade mark throughout its website. Therefore, it argues that the Respondent is intentionally trading on the goodwill associated with the Complainant’s MERRELL trade mark for commercial gain.\r\n\r\nThe Complainant also argues that the Respondent is using the Domain Name to intentionally disrupt the Complainant’s business, in accordance with paragraph 4(b)(iii) of the Policy, as the Respondent is using the Domain Name to resolve to a website offering to sell the Complainant’s products without authorization using the Complainant’s mark.  The Complainant asserts that, regardless of whether the Respondent is selling the Complainant’s products or counterfeit products, the Respondent is disrupting the Complainant’s business by attempting to compete with the Complainant’s own sales in Taiwan.\r\n\r\nFinally, the Complainant states that on 22 August 2017, the Complainant sent a letter to the Respondent notifying the Respondent of the Complainant’s prior trade mark rights and requesting that the Domain Name be transferred to Complainant but no response was received by the Complainant.\r\n\r\nRESPONDENT:\r\n\r\nThe Respondent states that it is a company based in Taiwan that provides web hosting and domain name registration services. The Respondent asserts that it is not the owner of the Domain Name and that the owner registered it through its service. The Respondent states that the owner information appearing on WhoIs is wrong due to a technical error, as the Respondent should appear only as the technical contact, not the owner. The Respondent explains that it was unable to modify the owner details given the status on the WhoIs by the Czech Arbitration Court but that it has the contact information of the real owner. Furthermore, the Respondent states that the website “www.twmerrell.com” is not located on its server and that it is impossible for it to provide any trading records of the website.",
    "rights": "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 Policy).",
    "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii) of the Policy).",
    "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).",
    "procedural_factors": "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.",
    "decision": "Accepted",
    "panelists": [
        "David Taylor"
    ],
    "date_of_panel_decision": "2017-12-12 00:00:00",
    "informal_english_translation": "The Complainant's subsidiary, Wolverine Outdoors, Inc., is the owner of the following trade mark registrations:\r\n\r\n- MERRELL (United States), Reg. No. 1835495, registered on 10 May 1994 (class 25 for “hiking boots and climbing boots”);\r\n\r\n- MERRELL (United States), Reg. No. 3368041, registered on 15 January 2008 (class 35 for “retail store services featuring footwear, clothing, bags, and accessories.”);\r\n\r\n- MERRELL (Taiwan), Reg. No. 688035, registered on 16 August 1995 (class 25 for “hiking boots, climbing boots and cross country ski boots.”);\r\n\r\n- MERRELL (Taiwan), Reg. No. 1684364, registered on 1 January 2015 (class 25 for “footwear, namely, boots, shoes and sandals.”); and\r\n\r\n- MERRELL (Taiwan), Reg. No. 1347266, registered on 16 January 2009 (class 35 for “retail store services featuring footwear, socks, and footwear uppers, shoe heels, shoe fasteners, shoe laces, shoe buckles, and fittings of metal for shoes and boots; clothing, clothing accessories and belts; bags and buckles for bags, zip fasteners for bags, suitcases handles, and locks for bags.”).",
    "decision_domains": {
        "TWMERRELL.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}