WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allbirds, Inc. v. Domain Administrator, See PrivacyGuardian.org / Dominik Hofmann, Doreen Eisenberg, Daniel Walter, Claudia Baecker, Franck Barth, Luca Foerster, Marko Dietrich, Kathrin EICHMANN, David Czinczenheim, Antje SCHROEDER, Daniel PROPST

Case No. D2021-3935

1. The Parties

The Complainant is Allbirds, Inc., United States of America (“United States”), represented by IPLA, United States.

The Respondents are Domain Administrator, See PrivacyGuardian.org, United States / Dominik Hofmann, Doreen Eisenberg, Daniel Walter, Claudia Baecker, Franck Barth, Luca Foerster, Marko Dietrich, Kathrin EICHMANN, Antje SCHROEDER, Daniel PROPST, Germany and David Czinczenheim, France.

2. The Domain Names and Registrars

The disputed domain names <allbirdsindiain.com>, <allbirdsshoesus.com>, <allbirdstrainersuk.com>, and <tenisiallbirds.com> are registered with NETIM SARL.

The disputed domain names <allbirdsoutletnz.com>, <allbirdsshoessale.com>, <allbirdsshoessale.top>, <allbirdstrainers.top>, and <allbirdtrainers.com> are registered with NameSilo, LLC.

The disputed domain names <allbirdssale.com> and <allbirdstrainers.com> are registered with 1API GmbH. (collectively or individually referred to as the “Registrar(s)”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2021. On November 24, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On November 24 and November 25, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on January 24, 2022 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint adding the domain names <allbirdsshoesus.com> and <allbirdstrainersuk.com> to the Complaint, on January 28, 2022. On February 7, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names <allbirdsshoesus.com> and <allbirdstrainersuk.com>. On February 8, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names <allbirdsshoesus.com> and <allbirdstrainersuk.com> which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the Third Amended Complaint on February 12, 2022.

The Center verified that the Complaint together with the amended Complaints 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 2, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2022. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 24, 2022.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 28, 2022. 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 explores footwear, clothing and related goods and services under the ALLBIRDS trademark since as early as 2016.

The Complainant is the owner, amongst dozens of others, of the following trademark registrations around the world (Annex 6 to the Third Amended Complaint):

- United States trademark registration No. 5,056,125 for ALLBIRDS (& device), registered on October 4, 2016 claiming first use in commerce on February 29, 2016, in class 25;

- Australian trademark registration No. 2079321 for ALLBIRDS, registered on October 13, 2020, in class 25; and

- International trademark registration No. 1523654 for ALLBIRDS, registered on February 14, 2020, in classes 9, 25 and 35.

The disputed domain names were registered on and are presently used in connection with:

5. Parties’ Contentions

A. Complainant

According to the Complainant, the disputed domain names are under common control given that all disputed domain names are (i) co-hosted by the same IP address (196.245.162.76); (ii) use the same Internet Service Provider (“ISP”), Orion Network Limited, based in Slovakia; and (iii) share the same naming pattern; (iv) ten of the disputed domain names have mailing addresses indicating addresses in Germany; (v) six of the disputed domain names share “@yeah.net” formative email addresses; (vi) four of the disputed domain names share “@126.com” formative email addresses; (vii) at the time of the filing of the Complaint, eight of the disputed domain names were used in connection with nearly identical fraudulent online shops reproducing the Complainant’s trademark (Annex 11 to the Third Amended Complaint); and (viii) the <allbirdsslade.com> disputed domain name displayed at least up to August 9, 2021, an “index” of websites that directly listed seven of the disputed domain names (Annex 5 to the Third Amended Complaint).

The Complainant asserts to have been using the ALLBIRDS trademark in connection with footwear, clothing and related goods and services since at least as early as 2016, enjoying tremendous success and third-party recognition worldwide, having grown to a global company operating online and brick-and-mortar stores across four continents and valued at over USD 1 billion. The Complainant further states to own and operate the domain name <allbirds.com>, registered on January 9, 2002.

According to the Complainant, the dominant part of the disputed domain names incorporate the Complainant’s ALLBIRDS trademark in its entirety with the addition of descriptive terms and/or country names or abbreviations such as “indian”, “outlet”, “nz”, “sale”, “us”, “trainers”, “tenisi” not capable of distinguishing the disputed domain names from the Complainant’s trademark.

As to the absence of rights or legitimate interests, the Complainant argues that:

(i) the disputed domain names are not being used in connection with a bona fide offering of goods or services as they are associated with or have been previously redirected or used in connection with copycat websites that mimic the Complainant’s official website and are likely to mislead Internet users into believing that the disputed domain names belong to or are associated with the Complainant;

(ii) the Complainant is not aware of any trademark rights, domain name rights or other rights that the Respondents have relating to the term ALLBIRDS; nor has the Complainant ever authorized the Respondents to use its ALLBIRDS trademark in connection with any goods or services; and

(iii) the Respondents are not commonly known by the disputed domain names.

Lastly, the Complainant points out that it holds senior trademark rights in the ALLBIRDS trademark which has become well-known, being the disputed domain names subsequently registered and used in connection with fraudulent websites selling footwear goods mimicking the Complainant’s official webpage, unduly reproducing the Complainant’s trademark and logo, intentionally attracting potential consumers and deceiving them into purchasing alleged counterfeit goods.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to it, according to paragraph 4(a) of the Policy.

In accordance with paragraph 14(b) of the Rules, if the Respondents do not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

Before turning to these questions, however, the Panel needs to address the issue of the consolidation of multiple Respondents.

A. Consolidation of Multiple Respondents

The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at the section 5.A. above.

Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.

All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the eleven disputed domain names dealt with at the same procedure, given that all disputed domain names: (a) share a similar naming pattern; (b) are co-hosted by the same IP address (196.245.162.76); (c) use the same ISP; (d) ten of the disputed domain names have mailing addresses indicating addresses in Germany; (e) six of the disputed domain names share “@yeah.net>” formative email addresses; (f) four of the disputed domain names share “@126.com” formative email addresses; (g) at the time of the filing of the Complaint, eight of the disputed domain names were used in connection with nearly identical fraudulent online shops reproducing the Complainant’s trademarks; and (h) the <allbirdsslade.com> disputed domain name displayed at least up to August 9, 2021, an “index” of websites that directly listed seven of the disputed domain names (Annex 5 to the Third Amended Complaint; and (i) no objection was made by the Respondents regarding consolidation.

This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.

B. Identical or Confusingly Similar

The Complainant has established its rights in the trademark ALLBIRDS (Annex 6 to the Third Amended Complaint). It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. (WIPO Overview 3.0, section 1.7).

The Complainant’s mark is entirely reproduced in the disputed domain names and the addition of terms as “indian”, “outlet”, “nz”, “sale”, “shoes”, “us”, “trainers”, “tenisi” or “uk”, in this Panel’s point of view, does not prevent a finding of confusing similarity between the disputed domain names and the trademark.

For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, even if they have acquired no trademark or service mark rights; or

(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As seen above, eight of the eleven disputed domain names were (and part still are) used in connection with fraudulent online stores reproducing the Complainant’s trademarks, selling alleged counterfeit goods what cannot characterize a bona fide offering of goods or services.

In addition to that, the Complainant indeed states that has the Complainant has not authorized the Respondents to use its ALLBIRDS trademark in connection with any goods or services.

Furthermore, the absence of any trademarks registered by the Respondent corresponding to the disputed domain names corroborates with the indication of the absence of a right or legitimate interest.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

D. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:

(i) circumstances indicating that the Respondents have registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of a trademark relating to the disputed domain names or to a competitor of the Complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the disputed domain names; or

(ii) the Respondents have registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondents have engaged in a pattern of such conduct; or

(iii) the Respondents have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ website or other location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website or location or of a product or service on the Respondents’ website or location.

The registration and use of the disputed domain names in bad faith can be found in the present case in view of the following circumstances:

(i) the Respondents have provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names;

(ii) the well-known status of the Complainant’s trademark and the nature of the disputed domain names, suggest a rather clear indication of the Respondents’ registration and use of the disputed domain names in bad faith, with the implausibility of any good faith use to which the disputed domain names may be put;

(iii) the indication of false addresses in the WhoIs data and, consequently, the Center not being able to have communications fully delivered to the Respondents

(iv) the passive holding of the disputed domain names, <allbirdsindiain.com>, <allbirdsshoessale.com>, and <allbirdstrainers.com>, does not prevent a finding of bad faith;

(v) the use of the disputed domain names, <allbirdsoutletnz.com>, <allbirdsshoesus.com> <allbirdstrainersuk.com>, <tenisiallbirds.com>, <allbirdsshoessale.top>, and <allbirdtrainers.com> to resolve to online shop selling shoes reproducing the Complainant’s trademark is evidence of bad faith as per paragraph 4(b)(iv) of the Policy.

(vi) the use of the disputed domain names<allbirdssale.com> and <allbirdstrainers.top> to resolve to parking pages or a website with PPC links is also evidence of bad faith;

For the reasons stated above, the Panel finds that the disputed domain names were registered and are being used in bad faith.

The third element of the Policy has therefore been established.

7. Decision

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 <allbirdsindiain.com>, <allbirdsoutletnz.com>, <allbirdssale.com>, <allbirdsshoessale.com>, <allbirdsshoessale.top>, <allbirdsshoesus.com>, <allbirdstrainers.com>, <allbirdstrainers.top>, <allbirdstrainersuk.com>, <allbirdtrainers.com> and <tenisiallbirds.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: April 11, 2022