WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Emu (Aus) Pty Ltd. and Emu Ridge Holdings Pty Ltd. v. Antonia Deinert
Case No. D2010-1390
1. The Parties
The Complainants are Emu (Aus) Pty Ltd. and Emu Ridge Holdings Pty Ltd. of Australia represented by Bryan Cave, LLP of Germany.
The Respondent is Antonia Deinert of France.
2. The Domain Name and Registrar
The disputed domain name <emubottes.com> (“Disputed Domain Name”) is registered with Xin Net Technology Corp. (“the Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2010. On August 18, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 19, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent’s contact information for the disputed domain name which differed in the Complaint. The Center sent an email communication to the Complainant on August 23, 2010 providing the contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 23, 2010.
The Center verified that the Complaint together with the amendment to the 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 August 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 28, 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.
4. Factual Background
The Complainants are in the business of premium sheepskin footwear and apparel. The 1st Complainant manufactures and markets its products under the trade mark EMU while the 2nd Complainant holds the trade mark registrations for the trade mark EMU in trust. The Complainants’ products under the trade mark EMU are distributed globally and the Complainants have expended extensive marketing and advertising efforts in relation thereto.
The 2nd Complainant owns various trademark registrations for the trade mark EMU around the world including the following:
Jurisdiction Trademark No Registration Date
Australia 335503 July 18, 1979
Community Trade Mark 3611787 July 8, 2005
The Complainants also maintain, directly or through affiliates, various domain names incorporating the trade mark EMU, including <emuaustralia.co.uk>, <emuaustralia.de>, <emuaustralia.nl>, <emuaustralia.ch>, <emuaustralia.it>, <emuaustralia.pl>, <emuaustralia.no>, <emuaustralia.nl>, <emuaustralia.ru>, etc. It is noted that the Complainants’ website at “www.emuaustralia.com” depicts the trademark EMU, a logo incorporating the word “emu” and the Australian flag (the “EMU Logo”), and photographs of models wearing presumably with the Complainants’ products.
The Disputed Domain Name was registered on January 28, 2010, many years after the above trademark registrations of the 2nd Complainant. Other than the WhoIs information and the website resolved from the Disputed Domain Name, regrettably little is known about the Respondent. As of August 3, 2010, the website depicted the trademark EMU, the EMU Logo and photographs that appeared identical to some of the photographs on the Complainants’ website. The website also provided shopping cart facilities in close proximity to logos of PayPal, Visa, Verisign and Mastercard.
5. Parties’ Contentions
The Complainants content that:
(1) The Disputed Domain Name is identical or confusingly similar to the trademark EMU in which the Complainants have rights. The addition of the word “bottes”, which means “boots” in French, does not prevent the Disputed Domain Name from being confusing similar to the trademark EMU;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants have not licensed or authorised the Respondent to use or register the trademark EMU or to use it as a second level domain name; and
(3) The Disputed Domain Name was registered and is being used in bad faith. The trademark EMU is well-known. The Respondent knew about the trademark EMU at the time of registering the Disputed Domain Name. The Respondent is exploiting the Disputed Domain Name commercially claiming that counterfeit EMU boots offered on the website are EMU originals. The Respondent has also plagiarized the content of the Complainants’ web-content, including photographs and images from the Complainants’ online catalog without the Complainant’s authorization.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement is Chinese. The default language of the proceeding is therefore Chinese. The Complainants have requested that English be the language of the proceeding. The Panel notes the following circumstances:
(1) The evidence shows that parts of the content of the website associated with the Disputed Domain Name was in English. The Panel notes that much of the content of the website as submitted in the evidence was in French. No Chinese featured on the website;
(2) The Complaint and the accompanying exhibits were submitted in English;
(3) The Complainants are based in Australia where English is the official language. The Respondent claims to be based in the city of Berlin in France where Chinese is not the official language;
(4) The Complainant does not readily understand Chinese
(5) Undue delay would result and additional expenses would be incurred if the Complainants were required to submit Chinese documents; and
(6) Since the Respondent has chosen not to contest the proceeding and/or the request for English to be the language of the proceeding, it would serve no discernible purpose to insist that Chinese be the language of the proceeding.
In view of the above, the Panel determines that English shall be the language of the proceeding in accordance to paragraph 11 of the Rules.
The Complainants are required to establish the following limbs of paragraph 4(a) of the Policy to succeed in the proceedings:
(1) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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 are being used in bad faith.
A. Identical or Confusingly Similar
From the facts of this case, the Panel has no doubts that the Complainants have rights in a trademark, namely the trademark EMU. It is a registered trademark in various jurisdictions dating back as far back as 1979. The word “emu” is incorporated in its entirety in the Disputed Domain Name. The only difference between the trademark EMU and the Disputed Domain Name is the suffix “bottes”, a French word which means “boots” in English. Since the Complainants specialize in footwear and the trademark EMU relates to the same, the word “bottes” clearly refers to the goods associated with the trademark EMU. The word “bottes” is essentially a generic suffix. Domain names such as the Disputed Domain Name have consistently been held to be incapable of being distinguished from the trademark incorporated entirely therein (e.g., Lacoste Alligator S.A. v. Priscilla, et al, WIPO Case No. D2010-0988).
The Panel sees no reason to depart from established authority and practice. Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the trademark EMU and the first limb of paragraph 4(a) is established.
B. Rights or Legitimate Interests
The Complainants have denied any relationship with the Respondent or authorization of the Respondent to use or register the trademark EMU in the Disputed Domain Name. The Respondent has chosen not to explain the situation and/or demonstrated any circumstances which may suggest any rights or legitimate interests. In the circumstances, in accordance with established principles, the Panel holds that the Complainants have shown a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the prima facie case and the second limb of paragraph 4(a) of the Policy is therefore also established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) provides an example of bad faith registration and use of a domain name:
“… by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The use of the trademark EMU, the EMU Logo and the photographs appearing on the Complainants’ website on the Respondent’s website is a clear attempt at associating with the Complainants and the Complainants’ products. It is not conceivable that the Respondent was unaware of the Complainant and the Complainant’s products under the trademark EMU when it registered the Disputed Domain Name. Such deliberate association amounts to the opportunistic bad faith highlighted time and again in past panel decisions (e.g., Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746).
The Panel is of the view that a reasonable person who visited the Respondent’s website was likely to be misled in relation to the source, sponsorship, affiliation, or endorsement of the website and the products purportedly made available for online sale on the website. The shopping cart facilities and use of the Visa, Mastercard and Paypal logos could only communicate that the website was able to undertake e-payment transactions. It cannot be imagined that the website did not have a motive of commercial gain from Internet users visiting it.
These facts are illustrative of the situation painted in paragraph 4(b)(iv) of the Policy. On that basis, the Panel holds that bad faith use and registration under the third limb of paragraph 4(a) is established as well.
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 <emubottes.com> be transferred to the Complainants.
Kar Liang Soh
Dated: October 12, 2010