WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Buffalo Boots GmbH v. Zhenya Du
Case No. D2018-2738
1. The Parties
The Complainant is Buffalo Boots GmbH of Cologne, Germany, represented by KLAKA Rechtsanwälte, Germany.
The Respondent is Zhenya Du of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <buffaloboots-shop.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2018. On November 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2018, 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.
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, and the proceedings commenced on December 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2018.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on January 11, 2019. 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 Buffalo Boots GmbH (“Buffalo Boots”) is a limited liability company established under German law that designs, creates and sells footwear and markets its products under the trademark BUFFALO.
The popularity of the Complainant increased during the 1980s and 1990s and its BUFFALO platform shoes and cowboy boots became a symbol of pop culture to the extent that members of the British pop band “The Spice Girls” regularly wore the Complainant’s platform shoes.
The Complainant, who has been in business for almost 40 years, still continues to offer its famous platform shoes together with a large variety of other shoe models.
The Complainant is the proprietor of multiple registrations for the trademark BUFFALO worldwide which have been applied for and registered before the Respondent registered the disputed domain name, including the following:
European Union Trade Mark registration No. 013432571 BUFFALO (figurative) registered March 10, 2015 and International registration No. 717749 registered July 1, 1999.
The Complainant owns several domain names containing the trademark BUFFALO, such as <buffalo.de>, <buffalo-boots.com> and <buffalo-boots.be>.
The Respondent registered the disputed domain name <buffaloboots-shop.com> on July 9, 2018, which resolves to a website which offers boots for sale.
5. Parties’ Contentions
The Complainant claims that the disputed domain name <buffaloboots-shop.com> is confusingly similar to the trademark BUFFALO in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which has been registered and is used by the Respondent in bad faith.
More specifically, the Complainant asserts that the Respondent is not generally known by the disputed domain name and has not acquired any trademark or service mark rights for BUFFALO, nor is it affiliated to the Complainant who has not authorized it to use the trademark BUFFALO in connection with a website nor for any other purpose.
The Complainant sustains that the website to which the disputed domain name resolves is used by the Respondent to operate a fraudulent web shop using the Complainant’s trademark, trade name as well as products and offers to ship these products to the customer.
On August 8, 2018 an employee of the Complainant ordered “Buffalo Classic – Cream Low Top Platform Sneakers” for USD 65.99 including shipping. The due amount was payed using a Master Card and until the time of filing the Complaint the nothing has been received. Neither a contact button “contact us” or an email address can be found on the website for further inquiry. There is a sworn affidavit from the employee in the file confirming this information.
In essence, the Respondent infringes the Complainant’s rights and, in such circumstances, there is no bona fide use of the Complainant’s mark by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights in the trademark BUFFALO.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.
In this case, the disputed domain name <buffaloboots-shop.com> contains the Complainant’s trademark BUFFALO in its entirety. In the Panel’s opinion the addition of the generic words “boots” which only describes the goods and “shop” which merely indicates a place where goods are sold, are not sufficient to avoid a finding of confusing similarity.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0"), in cases where the domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity of this first prong the Panel shall disregard the “.com” included in the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the trademark BUFFALO in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Complainant sustains that it has never granted the Respondent with the right to use or register the trademark BUFFALO belonging to the Complainant or to register and use the BUFFALO trademark as a domain name.
Previous panels under the Policy have found that a lack of rights or legitimate interests exists where, as here, “Complainant asserts that it has not authorized Respondent to use the mark.” Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA, WIPO Case No. D2008-0144.
As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests in the disputed domain name <buffaloboots-shop.com>. The name of the Respondent is Zhenya Du which does not resemble the disputed domain name in any manner.
Likewise, and as further discussed under section C of this Decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather it is using the Complainant’s trademark without consent for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is the official site of the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark BUFFALO and the trade name “Buffalo” when it registered the disputed domain name <buffaloboots-shop.com> on July 9, 2018.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Panel finds that the Respondent has registered the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used mark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) of the Policy.
In view of the evidence produced by the Complainant, it would seem that the Respondent is using the disputed domain name to misleadingly attract Internet users to a fraudulent web shop by using the Complainant’s trademark and trade name, which amounts to bad faith use.
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 <buffaloboots-shop.com> be transferred to the Complainant.
Miguel B. O'Farrell
Date: January 17, 2019