The Complainant is Birkenstock Orthopädie GmbH & Co. KG of Vettelschoss, Germany, represented by CMS Hasche Sigle, Germany.
The Respondent is ugg outlets of the People's Republic of China.
The Disputed Domain Name <birkenstock-de.com> is registered with HiChina Zhicheng Technology Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2010. On May 14, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Name. On May 17, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 20, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. In response to a notification by the Center regarding the Respondent information, the Complainant filed an amended Complaint on May 20, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 16, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on June 22, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant has been making shoes in Germany under the trade mark BIRKENSTOCK since 1774 for over 230 years. It is represented in over 60 countries and is one of the largest manufacturers of shoes and foot health products in the world. The Complainant's trade mark was awarded “the best shoe brand of the year” by an independent London fashion magazine Drapers in 2004.
The Complainant owns various trade mark registrations for the trade mark BIRKENSTOCK around the world including International Registration No. 468797 with a registration date of April 19, 1982. The Complainant operates its principal and international websites under the domain names <birkenstock.de> and <birkenstock.com> respectively. In addition, the Complainant holds other “birkenstock” domain names through its affiliated company.
When the Panel visited the Complainant's website at “www.birkenstock.com” to verify the Complainant's information, it was noted that the website redirects visitors to websites at “www.birkenstockusa.com” and “www.birkenstock.co.uk” for the North American and Great Britain markets respectively. On the websites, the Complainant consistently uses a prominent logo comprising the word BIRKENSTOCK in dark blue above the slogan “Made in Germany ● Tradition since 1774”. The homepage of “www.birkenstockusa.com” comprises the following prominent elements:
a) The above-mentioned logo at the top-left corner;
b) A brown tinted photograph of a shopfront embedded with a watermark of the word BIRKENSTOCK under the brown squarish box. A banner “today's featured retailer” is placed immediately above the photograph.
The Disputed Domain Name <birkenstock-de.com> was registered on April 12, 2010.
There is no information about the Respondent other than that contained in the WhoIs database relating to and website resolved from the Disputed Domain Name. It is noted that the Respondent's provided address indicated its country as China but referred to “[…] 951011 Northampton, Northampton-shire, California”. This Panel attempted to visit the website resolved from the Disputed Domain Name but the website was not available. As such, the only reference to the Respondent's website was that included in the Complaint.
The homepage resolved from the Disputed Domain Name purport to offer shoes for sale. The Panel noted the following about the website resolved from the Disputed Domain Name:
a) It displays a prominent logo comprising the words BIRKENSTOCK in dark blue above the slogan “Made in Germany ● Tradition since 1774”;
b) It includes a brown tinted photograph of a shopfront under a banner “today's featured retailer”. Unfortunately, due to the poor resolution of the image of the Respondent's website provided with the Complaint, the Panel is unable make out whether there are any watermarks in the image;
c) It offers links to information about shipping, discounts and the like.
The Complainant contends that:
1) The Disputed Domain Name is identical or confusingly similar to the Complainant's trade mark;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent does not have a licence to sell the Complainant's products but has created the impression that it has the same. The Respondent is well aware of the Complainant's fame and the Respondent is not commonly known by the Disputed Domain Name; and
3) The Disputed Domain Name was registered and is being used in bad faith. The Respondent acquired the Disputed Domain Name primarily to generate commercial gain by taking advantage of the Complainant's name and reputation. The design, images and text of the Respondent's websites were derived from the Complainant's authorized websites, particularly “www.birkenstockusa.com”. The Respondent created a likelihood of confusion with the Complainant's famous trade mark BIRKENSTOCK and a false impression of selling the Complainant's products.
The Respondent did not reply to the Complainant's contentions.
As the language of the registration agreement is Chinese, the default language of the proceeding should be Chinese. Nevertheless, the Panel hereby determines that English shall be the language of the proceeding pursuant to paragraph 11(a) of the Rules having regard to fairness to the parties and procedural cost-efficiency and expedition for the following reasons:
(1) The Complainant has requested that English be the language of the proceeding;
(2) The Respondent's website under the Disputed Domain Name is in fluent English and is a strong indication that the Respondent is also likely fluent in English;
(3) The Complaint is submitted in English. It would be time-consuming and cost-intensive to require the Complainant to provide Chinese translations of the Complaint and correspondence;
(4) The Respondent has not contested the language of the proceeding; and
(5) It would serve no discernible purpose or benefit in the Panel's view to adhere to the default language of the Registration Agreement in this case.
The Complainant had also submitted that the Respondent resides in the state of California in the United States and should accordingly be conversant in English as a result. The Panel has not taken this submission into consideration as the Complaint was later amended to rectify the address of the Respondent to “California, China”.
Paragraph 4(a) of the Policy requires the following to be established in order for the Complainant to succeed in this proceeding:
(1) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant's trade mark registrations for BIRKENSTOCK establishes the Complainant's trade mark rights for purposes of these proceeding. The Disputed Domain Name incorporates the entire mark BIRKENSTOCK. The only difference is the suffix “-de”. The suffix is a country code for Germany. Read in the context of the word “birkenstock”, the suffix in the Disputed Domain Name clearly designates a country website for Germany under the trade mark BIRKENSTOCK.
Numerous panels have applied the principle that a domain name incorporating a trade mark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is confusingly similar to the trade mark (e.g., Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144). The Panel is of the view that the suffix “-de” in the Disputed Domain Name is non-distinctive. Therefore, the Disputed Domain Name is confusingly similar to the Complainant's trade mark BIRKENSTOCK, further aggravated by the fact that the Complainant is of German origin. The first limb of paragraph 4(a) is accordingly satisfied.
It is the consensus of past panel decisions that a complainant is only required to make out a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name before the burden of proof shifts to the Respondent.
The Complainant, being the owner of rights in the trade mark BIRKENSTOCK, has confirmed that it did not grant the Respondent any rights to register or use the Disputed Domain Name. The incorporation of the Complainant's logo at “www.birkenstockusa.com” in the Respondent's website indicates that the Respondent is well aware of the Complainant and the Complainant's trade mark BIRKENSTOCK. The Respondent is also not commonly known by the Disputed Domain Name. Further, the failure to file a Response reinforces the likelihood that the Respondent has no rights or legitimate interests to put forward.
In the circumstances, a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name is established.
Based on the evidence submitted by the Complainant, this Panel accepts that the trade mark BIRKENSTOCK is prima facie well-known. The prima facie finding remains in view of the absence of a Response.
From the blatant use of the Complainant logo, the Respondent must have had prior knowledge of the Complainant's trade mark rights. The Complainant's trade mark International Registration No. 468797 predates the registration of the Disputed Domain Name by at least 25 years. Although the Panel is unable to conclude that the shopfront image on the Respondent's website is identical to that on the Complainant's website, the similarities are striking. The selection of the Disputed Domain Name by the Respondent together with the blatant adoption of the Complainant's logo and similar shopfront image clearly points to a deliberate intent to create an impression of an association with the Complainant. The use of the Disputed Domain Name in such a manner indicates opportunistic bad faith registration and use and takes unfair advantage of the reputation in the Complainant's trade mark (Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746; Privatbrauerei Eichbaum GmbH & Co, KG v. Hamit Karaca, WIPO Case No. D2010-0258: Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219).
Further, the Respondent's website offers the sale of products and is obviously targeted at commercial gain. The Panel has no doubt that the Respondent is using the Disputed Domain Name to intentionally attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of these websites or of products on the websites within the meaning of paragraph 4(b)(iv) of the Policy.
In addition, the address used by the Respondent for registering the Disputed Domain Name is highly suspicious. Having reviewed various world geographical gazetteers, the Panel believes that there is no official city, state of province in China known as “Northampton”, “Northampton-shire” or “California”. Attempts of the Center at contacting the Respondent by email and mail have met with abject failure. The Panel can only conclude that the contact details provided by the Respondent is fictitious.
An applicant for registration of a domain name has a duty to act honestly. The deliberate use of fictitious and/or ineffective contact particulars to register a domain name in the absence of extenuating circumstances speaks of bad faith registration and intention to use, and the subsequent use of the domain name will accordingly be tainted by bad faith as well (see Farouk Systems Inc. v. David, WIPO Case No. D2009-1245).
In the circumstances, te third limb of paragraph 4(a) is hereby established.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <birkenstock-de.com>, be transferred to the Complainant.
Kar Liang Soh
Dated: July 20, 2010