WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Think Schuhwerk GmbH v. Helmut Eder, Modern Tech Limited International
Case No. D2016-2295
1. The Parties
The Complainant is Think Schuhwerk GmbH of Kopfing, Austria, represented by Gail & Kollegen, Germany.
The Respondent is Helmut Eder, Modern Tech Limited International of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Name and Registrar
The disputed domain name <thinkschuhe.net> (the "Disputed Domain Name") is registered with RegistryGate GmbH (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2016. On November 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and that the language of the registration agreement is German.
The Registrar indicated on November 14, 2016 that the Disputed Domain Name was in redemption period status, upon a request for clarification by the Center, the Registrar indicated that the Respondent attempted to delete the Disputed Domain Name on November 11, 2016. Between November 16 and December 19, 2016, the Complainant, Registrar and Center engaged in a series of communications regarding the restoration of the Disputed Domain Name pursuant to paragraph 22.214.171.124. of the Registrar Accreditation Agreement. On December 19, 2016, the Registrar confirmed that the Disputed Domain Name had been restored.
On December 23, 2016, the Center sent an email communication to the Parties in both German and English regarding the language of the proceeding. On December 27, 2016, the Complainant requested that English be the language of the proceeding. The Respondent made no submission in this regard.
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 and 4, the Center formally notified the Respondent of the Complaint in English and German, and the proceedings commenced on January 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 24, 2017.
The Center appointed Peter Wild as the sole panelist in this matter on January 26, 2017. 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 owns a number of trademarks for THINK in various classes, including class 25, e.g., in Germany, registration number 30121498 (registered on June 10, 1997) and internationally, International registration number 801538 (registered on April 8 2003) which is protected in several countries, including the United Kingdom. The Complainant is active and well-known in a niche market for ecological friendly and natural shoes and uses the domain name <thinkshoes.com> as its main Internet address.
The Disputed Domain Name was registered on January 8, 2014. The Disputed Domain Name used to resolve to a website appearing to offer the Complainant's products for sale.
5. Parties' Contentions
The Complainant contends that it is the owner of a number of trademarks consisting of or containing the main element "Think" for a range of goods, including shoes in class 25. According to the Complainant, it has been selling shoes since the mid 1990s in Europe successfully. The Complainant also claims that, in connection with shoes, it is omnipresent on the Internet, with its main website at "www.thinkshoes.com" and that the domain name <thinkschuhe.net> is confusingly similar to the above mentioned THINK trademarks . The Complainant alleges that the Respondent has no legitimate interest in the Disputed Domain Name which was registered and used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the proceeding
The Complainant has filed the Complaint in English. The verification process with the Registrar showed that the registration agreement was in German. The Complainant, upon invitation by the Center, confirmed that the language of the proceeding should be English and the Respondent did not reply. According to Paragraph 11 of the UDRP Rules, unless the parties to an administrative proceeding agree otherwise, or the Registration Agreement that relates to the domain name in question specifies otherwise, the language of the administrative proceeding will normally be the language of the relevant Registration Agreement. The Panel, however, has the discretion to designate a different language, taking into consideration the circumstances of the administrative proceeding (e.g., the nationality of the parties, the language of the documentation). In the present case there is no agreement among the parties regarding language. However, there are circumstances which allow English to be the language of the proceedings: The Respondent is based in the United Kingdom, the website which was active under the Disputed Domain Name was in a mix of the languages German and English. The Respondent did not make any submissions in the proceeding at all. With this record, the Panel decides that the language of the procedure is English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Complainant owns registered rights in the trademark THINK. This trademark is fully integrated in the Disputed Domain Name. It stands prominently at the beginning of the Disputed Domain Name and is amended by the generic German word "Schuhe" which is easily recognized also by English speakers to mean "shoes". Such a generic amendment does not alter the overall similarity and therefore the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Respondent is not known under the Disputed Domain Name and claims no connection with or authorization from the Complainant. It is unclear whether the shoes offered for sale on the website under the Disputed Domain Name are shoes which are produced by the Complainant or whether they are third party shoes. As the Panel finds, this factual question has no influence on the issue of rights or legitimate interests. Should the goods offered be from a third party, no legitimate interest can be derived. Should they be the Complainant's products and the Respondent is considered as a (non-authorized) reseller, the established Oki Data principles must be applied, according to which a reseller or distributor can only be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The second point above is unclear, and the third point is not fulfilled in the Panel's assessment.
In the absence of an explanation by the Respondent, the Complainant's establishment of the prima facie case is sufficient.
With the evidence on file, this Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Disputed Domain Name directs the Internet user to a website on which various shoes are offered for sale. On that website, pictures of shoes can be found with descriptions mentioning the trademark THINK. Taking into account the combination of the Complainant's trademark and the word "Schuhe", describing the Complainant's products, it is therefore certain to the Panel that the Respondent was and is aware of the Complainant's trademark. In this Panel's view this establishes bad faith registration of the Disputed Domain Name as there was neither authorization nor consent from the Complainant to register the Disputed Domain Name.
Using a trademark which refers to the Complainant's well-known products will attract Internet users who are interested in the Complainant's products. The use of the Complainant's trademark in the disputed domain name and the linked website must therefore be seen as the Respondent's intentional attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location (paragraph 4(b)(iv) of the Policy). This establishes bad faith use of the Disputed Domain Name.
This Panel therefore comes to the conclusion that the third element of the Policy is met.
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 name <thinkschuhe.net> be transferred to the Complainant.
Date: February 9, 2017