Thu 27. Feb 2025, 20:17
Ernsting's family GmbH & Co. KG has won 32 fake shop domains in extensive UDRP proceedings before the World Intellectual Property Organization (WIPO). The opponents remained silent.
The German textile retailer Ernsting's family GmbH & Co. KG saw its trademarks infringed by numerous domains such as ernstingsfamilyoutlet-eu.shop, ernstingsfamily-de.shop or ernstings-family.shop and initiated UDRP proceedings against all the parties behind them. The domains, which - in all but five cases - redirected to fake shop pages similar to those of Ernsting's family and on which the Ernsting's family brand logo could be found, are registered to owners such as “eee qeqe, dasdhuighjbvhjbhjb”, “zhang snge”, “zhang san”, “xiao lin”, but also “Marco A Little” and “Anna Vancini Vancini”. The opponents of the case did not comment on the matter. Deanna Wong Wai Man, a New Zealand lawyer and biologist based in Hong Kong, was appointed as the decision-maker.
Wong Wai Man first examined two preliminary questions before granting the appeal (WIPO Case No. D2024-5167). First, Wong Wai Man clarified whether a uniform procedure was possible in view of the numerous different opponents. The complainant had argued that the domains were all registered between March 1, 2024 and December 14, 2024, most of them had identical or very similar e-shop copies with the complainant's prominent trademark logo and thus clearly showed uniform control. Only five domains were still unused. However, all domains had the same naming scheme, with all of them showing the trademark, possibly in small variations, supplemented by geographical identifiers such as “de”, “es” or “eu” or dictionary terms such as “sale” or “deal”. Furthermore, the owner names turned out to be obviously false or consisted of non-existent names made up of random sequences of letters and numbers. For Wong Wai Man, this, together with the fact that none of the opponents had entered an appearance, was sufficient and not unfair to the opponents to confirm a uniform procedure here.
The next point was the question of the language of the proceedings. Here, too, Wong Wai Man's arguments were sufficient: Only two of the disputed domains had a Chinese registration agreement, all others were registered in English via English-speaking registrars. The domains were all registered in ASCII characters and contained the English word “family”. They were also used for fake e-shops with similar content. In addition, the unused domains contained the entry “The website is under maintenance”. All of this suggested that the proceedings should be conducted in English so that Wong Wai Man could finally begin the actual examination.
She confirmed that the domains all contained the complainant's trademark, making them confusingly similar. Wong Wai Man also confirmed the prima facie evidence presented by the complainant that the opponents had no right or legitimate interest in the domains and saw no objection from the opponents. The domains were used for fake e-shops and there was no evidence that the opponents had made reasonable and demonstrable preparations to use the domains in connection with a bona fide offer of goods or services. Rather, the domain names showed the domain holders' intention to mislead Internet users in order to take advantage of the complainant's fame and reputation. With regard to the five domains that did not redirect to a fake e-shop, Wong Wai Man saw no scope for the doctrine of legitimate passive holding of a domain under the circumstances of this case.
Wong Wai Man also found in favor of the complainant on the issue of bad faith on the part of the opponents when registering and using the domains. The domains are all confusingly similar to the complainant's trademark. The complainant's trademarks were registered years before the domains were registered. The opponents knew or at least should have known the trademarks. The fact that they registered the domains in bad faith is shown by the fact that they used the trademarks for the domains and the trademark logo in their web shops. The use of the brand logo in the web shops also confirmed the bad faith use of the domains. With regard to the five unused domains, Wong Wai Man stated that the argument of passive use of the domains did not prevent the finding of bad faith: the high degree of recognition of the complainant's trademarks, the fact that the domains contain the trademarks and because it is unlikely that the opponents will use the domains in a fair manner speak for themselves. Wong Wai Man thus upheld the complaint and decided to transfer all domains to the complainant.
The UDRP decision on the ernstingsfamily-de.shop domains and others can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-5167.pdf