WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Birkenstock Orthopädie GmbH & Co. KG v. Faruk Sengul
Case No. D2011-1614
1. The Parties
The Complainant is Birkenstock Orthopädie GmbH & Co. KG of Vettelschoss, Germany, represented by CMS Hasche Sigle, Germany.
The Respondent is Faruk Sengul of Istanbul, Turkey.
2. The Domain Names and Registrar
The disputed domain names <birkenstockturkiye.com> and <birkenstockturkiye.net> are registered with FBS Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2011. On September 23, 2011, the Center transmitted by email to FBS Inc. a request for registrar verification in connection with the disputed domain names. On September 30, 2011, FBS Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 4, 2011, the Center sent an email communication to the parties in English and Turkish regarding the language of the proceedings. On October 4, 2011, the Complainant requested that English be the language of the proceedings. On October 7, 2011, the Respondent requested Turkish be the language of the proceedings. On October 14, 2011, the Center notified the parties of its decision to 1) accept the Complaint as filed in English; 2) accept a Response in either English or Turkish; and 3) appoint a Panel familiar with both languages mentioned above, if available.
The Center verified that 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 in both English and Turkish, and the proceedings commenced on October 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2011.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on November 17, 2011. 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 Complainant was founded in 1774 and has been operating in the field of shoemaking under the sign “birkenstock” for decades. The Complainant owns various trademark registrations for the mark BIRKENSTOCK including Turkey. The trademark BIRKENSTOCK was registered long before the registration of the disputed domain names (which were registered in June 2011).
5. Parties’ Contentions
The disputed domain names are identical to the trademark BIRKENSTOCK of the Complainant. The disputed domain names reproduce the Complainant’s trademark BIRKENSTOCK in its entirety and simply append the descriptive suffix “turkiye”. This causes a high likelihood of confusion among the consumers.
The geographic designation “turkiye” adds nothing distinctive to the disputed domain names, and the emphasis remains on the mark BIRKENSTOCK to attract the attention of Internet users.
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In support of this allegation, the Complainant states that the Respondent has never been known by the disputed domain names, the Complainant adds that the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name containing the above-mentioned trademark.
The disputed domain names were registered and are being used in bad faith.
The Respondent’s websites offer online sale of products. The Respondent is thus intentionally attempting to attract to Internet users to the Respondent’s websites for commercial gain, by creating a likelihood of confusion with the Complainant’s famous trademarks 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.
The Complainant also added that the Respondent takes unfair advantage of the reputation of the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used by the Respondent in bad faith.
A. Language of the Proceeding
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the Respondent requested for Turkish to be the language of the proceeding, whereas the Complainant requested for English to be the language of the proceeding. It is without question that the registration agreement for the disputed domain names was made in the Turkish language. However, the websited connected to one of the disputed domain names was displayed also in English. In addition, the Complainant is not able to communicate in Turkish and therefore, if the Complainant were to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.
B. Identical or Confusingly Similar
The Complainant is the owner of the trademark BIRKENSTOCK, which is protected by numerous trademark registrations in many countries including Turkey.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
In addition, the Panel also concurs with the finding of previous UDRP panels that the use of a famous mark in its entirety together with a geographic term in a domain name will tend to create a domain name that is confusingly similar to the famous mark. See, e.g., Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNIC.com / Domain Name for Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc, Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388.
Also, the addition of the suffixes “.com” and “.net” are non-distinctive because they are required for the registration of the disputed domain names. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540; Sanofi-aventis v. US Online Pharmacies, WIPO Case No. D2006-0582. Finally, the Respondent has brought no argument in support of its contention that the disputed domain names are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain names. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain names. Nor has the Respondent shown that it has been commonly known by the disputed domain names. The Complainant showed that the Respondent has neither a license nor any other permission to use the disputed domain names. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Panel finds that given the use made of the disputed domain names, when the Respondent registered the disputed domain names it must have known that BIRKENSTOCK was the trademark of the Complainant. It likely registered the disputed domain names because they would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration; however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.
As indicated above, the Panel is of the opinion that the Respondent must have been aware of the Complainant and the trademark BIRKENSTOCK at the time the disputed domain names were registered.
The Panel, in accordance with previous UDRP decisions, is of the opinion that this knowledge may be considered as both a precondition and in appropriate cases also an indication of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The use of the trademark BIRKENSTOCK in the website “www.birkenstockturkiye.com” also supports a finding of bad faith on the part of the Respondent. The Respondent obviously tries to create the impression that the website would be property of the Complainant.
Thus it is obvious to this Panel that by using the disputed domain names, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
In view of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <birkenstockturkiye.com> and <birkenstockturkiye.net> be transferred to the Complainant.
Dilek Ustun Ekdial
Dated: December 01, 2011