WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vans, INC. v. Wolfgang Bach
Case No. D2019-1008
1. The Parties
The Complainant is Vans, INC., United States of America, represented by SILKA Law AB, Sweden.
The Respondent is Wolfgang Bach, Germany.
2. The Domain Name and Registrar
The disputed domain name<vansoldskoolpro.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2019. On May 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 7, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 8, 2019.
The Center verified that the Complaint together with the amended 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 May 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2019.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on June 6, 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 founded in 1966, creates action-focused footwear, apparel and accessories for skateboarders, surfers, BMX riders and snowboarders across the world under the VANS brand. The Complainant appears to have started off as a skateboarding company that went on to emerge as a leading action sports brand and is today one of the world’s largest youth culture brands.
The Complainant has a major online presence and owns a number of domain names containing its name and trademark VANS. A list of such domain names registered by the Complainant are set out in section 12 of the Complaint and documents containing relevant information as regards the same have been attached as Annex 5 to the Complaint. In Germany, the Complainant appears to be operating through its localized website hosted on the domain name <vans.de>. The Complainant has attached extracts from some of the websites owned by it (including extracts of its localized website in Germany) as Annex 6 to the Complaint that illustrate the company profile, background and activities of the Complainant. The Complainant currently operates over 585 retail stores worldwide.
The Complainant owns trademark registrations for VANS as a word mark in Germany (Registration No. 2097386, registered on June 12, 1995), and United States of America with (Registration No. 1269201, registered on March 6, 1984). Further, the Complainant also has trademark registrations for VANS as a stylized mark in Germany (Registration No. 1086826, registered on January 16, 1986), and in United States of America (Registration No. 1861882, registered on November 8, 1994). The VANS stylized marks are depicted below and a variant of the same is also used as a logo on the Complainant’s website:
 (DE Reg. No. 1086826) |  (U.S. Reg. No. 1861882) |
|
Documents illustrating the trademark registrations of the Complainant for VANS both as a word mark and as a stylized mark both in Germany and in United States of America are attached as Annex 4 to the Complaint. The use of VANS as a logo is also evident from the various extracts of the Complainant’s websites as have been attached as Annex 6 to the Complaint.
The Respondent has registered the disputed domain name <vansoldskoolpro.com> on December 18, 2017, according to the concerned Registrar’s WhoIs records. The WhoIs search results as regards the disputed domain name is attached as Annex 2 to the Complaint.
Further, the disputed domain name resolves into a fully functional website on which footwear products purported to be genuine products are being sold to consumers at prices that are significantly lower than the Complainant’s prices. The >Respondent’s website also displays the Complainant’s trademarks.
The Complainant’s VANS trademark is easily identifiable on the images of the products being offered for sale on the Respondent’s website and that the said trademark also forms a part of the product description accompanying the images of the products. The Complainant alleges that the said products are believed to be knock offs since they are being sold at 50% less than the actual price of the original products. The Respondent’s website also appears to give off an impression of being an official VANS website. Printouts from the Respondent’s website showing its unauthorized use of the Complainant’s name and trademark VANS are attached as Annex 7 to the Complaint.
5. Parties’ Contentions
A. Complainant
The Complainant states that its VANS mark has become a well-known mark due to the Complainant’s extensive use and registration of the said marks around the world
The Complainant further contends that the disputed domain name directly incorporates the Complainant’s registered and well-known trademark VANS in its entirety and also uses the name of the Complainant’s product called “Old Skool Pro” as a part of the disputed domain name. The Complainant argues that the addition of generic Top-Level Domains (“gTLD”), i.e., “.com” does not add any distinctiveness to the disputed domain name. The Complainant therefore states that the disputed domain name should be considered as confusingly similar to its registered trademark VANS.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not making a bona fide offering of goods or services through the disputed domain name as also that the disputed domain name incorporates the trademark VANS, which is not owned by the Respondent, nor is it known to consumers by the said name. The disputed domain name is intended to induce consumers into visiting the commercial website hosted on the said domain name under the belief that it is the Complainant’s authorized website.
The Complainant contends that the disputed domain name resolves to a commercial website that is selling what are purported to be the Complainant’s footwear products at heavily discounted prices. The Complainant states that the products being offered on the said website are presumably counterfeit products and the Respondent is making an unauthorized use of the Complainant’s mark on the website, images of the products as well as a part of the product description.
The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant’s VANS mark. The Complainant argues that the use of the Complainant’s mark in a disputed domain name to sell the Complainant’s products without authorization from, and in competition with the Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.
The Complainant cites H & M Hennes & Mauritz AB v. Donnie Lewis, WIPO Case No. D2017-0580, where the respondent was selling counterfeit products, to argue that the use of the disputed domain name to sell counterfeit products of the complainant does not serve to create any rights or legitimate interest in the disputed domain name in favour of the respondent.
Further potential customers can also create an account on the website where sensitive information is sought from consumers such as username and password. The Complainant asserts that such request for sensitive information on a site which the Complainant does not control is not only a security threat but can also cause ill will against it, if the information obtained is used in a manner which is not in consonance with the Complainant’s security measures.
The Complainant states that the Respondent has registered and is using the disputed domain name in bad faith. The trademarks of the Complainant that are subsisting and valid in Germany (where the Respondent likely originates from) predate the registration of the disputed domain name on December 18, 2017. The Complainant commenced the use of the VANS brand as early as in 1966. The Complainant contends that the active business presence of the Complainant shows that it was highly unlikely that the Respondent was not aware of the Complainant’s rights in the name and mark VANS. The Respondent could have easily performed a search before registering the disputed domain name and would have quickly learnt that the trademark VANS is owned by the Complainant and that the Complainant has been using its trademark for a number of years.
The Complainant further contends that searches conducted in trademark databases did not disclose that the Respondent has applied for or is the owner of a corresponding mark. Further searches on the search engine Google for the terms “vans” or “vans old skool pro” revealed that all the results produced relate to the Complainant and not the Respondent. Search Results from Google as regards the terms “vans” or “vans old skool pro” are attached as Annex 8 to the Complaint.
B. Respondent
The Respondent did not reply to the Complaint.
6. Discussion and Findings
The Respondent did not file any response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favour of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy.
Although the panel may draw appropriate inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the mark belong to its respective owner. The Panel finds that the Complainant has provided more than satisfactory evidence of its rights in the VANS trademarks (both word and logos) on the basis of its numerous trademark registrations in both the United States of America as well as in Germany, where the Respondent Wolfgang Bach is verily believed to originate from. The Panel takes note that the Complainant also has a website hosted under the domain name <vans.de>.
The Panel observes that the disputed domain name directly incorporates the Complainant’s registered and well-known trademark VANS in entirety. Further, it is noted that the disputed domain name also uses the name of the Complainant’s product called “Old Skool Pro” as a part of the disputed domain name. Details of the said product can be accessed at “https://www.vans.com/shop/old-skool-pro”.
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617; Oki Data Americas, Inc. v. the ASD, Inc., WIPO Case No. D2001-0903; Go Daddy.com, Inc. v. Shoneye’s Enterprise, WIPO Case No. D2007-1090; and Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
It is well accepted by UDRP panels that a gTLD, such as “.com”, is to be typically ignored when assessing whether a domain name is identical or confusing similar to a trademark in which the Complainant has rights. See, Rolls-Royce plc v. John Holt, WIPO Case No. D2017-1842; Carrefour v. Saidoun Noira, WIPO Case No. D2018-2580; and Sanofi v. Tyesha Hirthe, WIPO Case No. D2018-1339.
This Panel therefore concludes that since the registered trademark VANS of the Complainant is recognizable within the disputed domain name, the disputed domain name is confusingly similar to the Complainant’s VANS trademark. See sections 1.7 and 1.8 of the WIPO Overview 3.0. The Panel accordingly finds that the requirement of paragraph 4(a)(i) of the Policy stands satisfied to the effect that the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademarks or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy has been
summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a Complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element 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”.
Given that the Respondent was duly notified of the Complaint and has chosen not to rebut it on merits, the Panel draws an adverse inference against the Respondent with respect to the allegations made by the Complainant, from the silence of the Respondent (See, Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009). However, the Panel has carefully reviewed the record and is independently convinced that the Complainant has established a prima facie showing under paragraph 4(a)(ii) of the Policy. The Panel further finds no material independently subsisting in favour of the Respondent that would entitle him to claim any of the safeguards spelled out in paragraph 4(c) of the Policy. The Panel on the basis of material produced by the Complainant accordingly arrived at the following conclusions:
(i) The Complainant has established that it has been carrying on business under the trademark VANS since 1966. The Complainant has also effectively demonstrated that it is the registered proprietor and owner of the VANS trademarks, rights in respect of which have accrued in the Complainant’s favour, long prior to the Respondent’s registration of the disputed domain name on December 18, 2017.
(ii) The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the Respondent not having any registered trademarks or trade name corresponding to the disputed domain name. The Respondent does not have any rights in the VANS trademark that can be established by common use.
(iii) The Panel finds that there is no affiliation of the Respondent with the Complainant nor was any license or authorization of any kind given by the Complainant to the Respondent to use its registered VANS trademark in any manner whatsoever including domain names.
(iv) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, or a legitimate, noncommercial or fair use of the disputed domain name.
On a review of the evidence presented by the Complainant (Annex 7 to the Complaint), the Panel finds that in the backdrop of the overall look and feel of the Respondent’s website coupled with the prominent display of the Complainant’s VANS trademarks (both word and logo) on the said website, Internet users could easily be confused into assuming that the Respondent’s website is affiliated with or has the endorsement or sponsorship of the Complainant, and that the goods being offered on the said website are indeed original VANS branded goods. See, Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774. In the absence of any explanation by the Respondent and in light of the evidence furnished by the Complaint, there is a strong chance that the products being sold on the website hosted on the disputed domain name are counterfeit or knock off versions of the Complainant’s products.
The Panel takes note that potential customers can also create an account on the Respondent’s website hosted on the disputed domain name where sensitive information namely username and passwords are collected to effect transactions. The Panel agrees with the Complainant that sensitive information obtained by the Respondent’s website over which he exercises no control is a security threat to consumers and finds that it could erode the goodwill of the Complainant, if the information so obtained is misused. Reliance placed by the Complainant on H & M Hennes & Mauritz, WIPO Case No. D2017-0580, is accepted by the Panel and that it agrees with its finding that such use of the disputed domain name does not constitute any rights or legitimate interests in the disputed domain name.
Having regard to the relevant circumstances in this case, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. On the contrary, the Panel finds that the Respondent had registered the disputed domain name in order to exploit and profit from the Complainant’s rights in the VANS mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must show that the Respondent has registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant has produced credible evidence that it owns numerous domain names which incorporate its registered and well-known trademark VANS, including the domain name <vans.de>, which hosts the website in Germany. Further it has been successfully highlighted by the Complainant that it has numerous trademark registrations for the VANS mark worldwide, including in Germany as early as 1986 (where the Respondent presumably originates from) which predate the registration of the disputed domain name on December 18, 2017. The said fact is indicative of the Respondent’s bad faith in having registered the disputed domain name. See, Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735.
The Panel finds that there is merit in the Complainant’s contention that its use of the VANS trademark dates back to the year 1966. By virtue of the Complainant’s widespread reputation, use and trademark registrations, the Panel finds it clear that the Respondent ought to have known of the Complainant’s rights in the VANS name and trademark. The Panel finds merit in the argument of the Complainant that it seems unlikely that the Respondent was not aware of the unlawful registration of the disputed domain name and that the same had been registered in bad faith. See, Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. This is particularly compounded by the fact that the Complainant’s trademarks are being used on the website and the Complainant’s products (or lookalikes of the same) are being sold.
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the Respondent, if, by using the domain it has intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the domain resolves to, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location to which the domain name resolves to. In this regard, the Panel notes the following:
(i) The disputed domain name <vansoldskoolpro.com> resolves to a fully functional website on which footwear products purported to be genuine VANS products are being sold.
(ii) The use of the Complainant’s registered trademark VANS along with the name of its popular product, the Old Skool Pro shoe, will probably create confusion in the minds of consumers, thus attracting them to the Respondent’s website.
(iii) Thereafter, the content of the website uses the Complainant’s trademarks (both word and logo) in an manner that further compounds consumer confusion and association between the Complainant and the Respondent.
The Complainant’s VANS trademark is easily identifiable on the images of the products being offered for sale on the Respondent’s website and that the said trademark also forms a part of the product description accompanying the images of the products. The Complainant has contended that the products being sold on the Respondent’s website are likely to be knock offs, since they are being sold at 50% less than the actual price of the original VANS branded products. The Panel agrees with decisions of previous UDRP panels that using a disputed domain name to facilitate the sale of knock offs or counterfeit goods is evidence of bad faith (see Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).
The website of the Respondent contains misleading information that suggests that the website hosted on the disputed domain name is an official VANS website.
The Panel has evaluated the above-mentioned evidence and opines that the same demonstrates intent on the part of the Respondent to specifically target Internet users into visiting his website hosted on the disputed domain name by creating a likelihood of confusion with the Complainant’s VANS trademark and logo for the purpose of making unlawful commercial gains.
The Panel finds that the Complainant has effectively demonstrated that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s rights in the VANS mark and logo through the creation of confusion. The fact that the Respondent is selling footwear products purported to be genuine VANS products of the Complainant, also aids and abets the confusion.
In light of all of the foregoing, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See, Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
Accordingly, having regard to the circumstances of this particular case, the Panel holds that the Complainant has met its burden under 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 name <vansoldskoolpro.com> be transferred to the Complainant.
Shwetasree Majumder
Sole Panelist
Date: June 21, 2019