Complainant is Birkenstock Orthopädie GmbH & Co. KG, Vettelschoss, Germany, represented by CMS Hasche Sigle, Germany.
Respondent is JL Innoways Co. Ltd., Jihao Jiang of Shanghai, China, represented by Yingke Law Firm Shanghai Offices, China.
The disputed domain name <birkenstock-china.com> is registered with FastDomain, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2012. On June 13, 2012, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On June 16, 2012, FastDomain, Inc. transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 18, 2012. In accordance with the Rules, paragraph 5(a), the original due date for Response was July 8, 2012, and the due date was subsequently extended to July 13, 2012. The Response was filed with the Center on July 13, 2012.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 17, 2012. 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.
Complainant has manufactured and distributed shoes under the BIRKENSTOCK mark for over 230 years. Founded in 1774 by Johann Adam Birkenstock as a family-owned business, Complainant has grown into an international company, operating in over 60 countries around the world. In 2004, Drapers magazine named Complainant’s BIRKENSTOCK trademark as “the best shoe brand of the year”.
Complainant owns and operates websites in connection with the domain names <birkenstock.de>, <birkenstock.com>, <birkenstock.eu>, and <birkenstock.at>.
Complainant owns many trademark registrations around the world for the BIRKENSTOCK trademark, including but not limited to: the European Union; Mexico; Brazil; the United States of America; Canada; China; Hong Kong, China; Taiwan Province of China; Malaysia; Singapore; Japan; and Thailand.
In particular, Complainant owns Chinese Trademark Registration Nos. 1605670, 1521462, 1113401 and 1138952 and International Registration No. 468797 for the BIRKENSTOCK trademark.
Respondent registered the disputed domain name <birkenstock-china.com> on February 26, 2007, and began using the disputed domain name <birkenstock-china.com> in early 2009. At the time the Complaint was filed, the disputed domain name reverted to a website that featured shoes bearing the BIRKENSTOCK trademark.
Complainant owns many trademark registrations for the BIRKENSTOCK trademark, including Chinese Registration Nos. 1605670, 1521462, 1113401 and 1138952, International Registration No. 468797 and Community Trademark Registration No. 8284457. Respondent has registered the disputed domain name <birkenstock-china.com> which is identical to Complainant’s registered trademark, except for the addition of the word “china” and the generic Top-Level Domain (gTLD) suffix, “.com”. Complainant contends that the addition of a geographical designation such as the word “china” does not distinguish a domain name from a registered trademark. Furthermore, the addition of gTLD suffix does not distinguish the disputed domain name from Complainant’s trademark.
Respondent is not publicly known by the Birkenstock name, and Complainant submits that Respondent cannot have any rights or legitimate interests in the disputed domain name, because Complainant has exclusive rights to the BIRKENSTOCK trademark in China and internationally. Respondent has no past or current business relationship with Complainant, and Respondent was never licensed or otherwise authorized by Complainant to use Complainant’s trademark. Further, Respondent is not making a bona fide use of the disputed domain name, and has used the disputed domain name in connection with a website which offers for sale shoes bearing Complainant’s trademark which it was not authorized or licensed to do. Respondent is also selling shoes and products of Complainant’s competitors.
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) Respondent must have known about Complainant’s rights in the BIRKENSTOCK trademark when it registered a confusingly similar domain name; and (ii) Respondent registered and is using a confusingly similar domain name which reverts to a website which offers for sale shoes bearing the BIRKENSTOCK trademark and competitors’ products for purposes of monetary gain.
Respondent contends that the disputed domain name <birkenstock-china.com> is not confusingly similar to Complainant’s BIRKENSTOCK trademark. Respondent claims that the addition of the geographic word “china” adds great distinction to the disputed domain name. The addition of the word “china” is to attract the attention of Chinese Internet users, and not worldwide customers.
Respondent submits that Complainant may own Chinese trademark registrations, but it does not prove that Respondent was aware of Complainant’s rights in the BIRKENSTOCK trademark. Respondent submits that Complainant has not provided evidence that it has been active in commerce in China and that it sells Birkenstock shoes in China. Respondent claims that it obtains authentic Birkenstock shoes from an authorized distributor named Natuerlich Footshop GmbH. Respondent claims that because it is obtaining authentic Birkenstock products it has a legitimate right and interest in the disputed domain name <birkenstock-china.com>. Respondent claims to be a legitimate reseller of Birkenstock shoes.
Respondent denies registering and using the disputed domain name to interfere with Complainant’s business in China, and claims that it is using the disputed domain name in a bona fide offering of goods.
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) 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.
The Panel finds that Complainant does have trademark rights in BIRKENSTOCK by virtue of Chinese Trademark Registration Nos. 1605670, 1521462, 1113401 and 1138952, International Registration No. 468797 and Community Trademark Registration No. 8284457.
The Panel further finds that the disputed domain name <birkenstock-china.com> is identical to Complainant’s registered tBIRKENSTOCK rademark, except for the addition of the geographical designation “china”. The addition of a geographical word does not serve to distinguish a domain name from a registered trademark. Furthermore, the addition of the gTLD suffix, “.com” does not serve to distinguish the disputed domain name from Complainant’s trademark.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
The factual situation here squarely raises the issue of an unauthorized distributor incorporating a well-known trademark into an operating website and a domain name for commercial purposes. The act of distributing genuine Birkenstock products in China is not the critical complaint; rather the issue is whether an unrelated third party distributor is entitled to promote goods (however those goods are sourced) through a domain name principally comprised of the trademark in question. For the reasons set out below, the Panel finds in all the circumstances that Respondent lacks rights and legitimate interests in the disputed domain name.
In evaluating whether Respondent has used the disputed domain name in connection with a bona fide offering of goods or services, the Panel relies on the reasoning in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. As summarized in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.3, Respondent must meet at least the following requirements:
(1) the actual offering of goods and services at issue,
(2) the use of the site to sell only the trademarked goods, and
(3) the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder.”
On the facts of this case, Respondent satisfies the first element as it appears to offer genuine Birkenstock footwear on its website. However, with respect to the second requirement, the evidence shows that Respondent has offered products from competitors on its website as well (including Rockport and Nautica branded footwear). The evidence on the third point is also problematic for Respondent, in light of the way it has constructed its website. In the Panel’s view, a typical consumer upon reaching the homepage of Respondent’s website would almost certainly believe it to be a website authorized by the Complaint. All primary indicia on the homepage suggest a direct connection to Complainant’s business. In particular, Respondent has adopted the trade name JL Birkenstock Online Shop. This trade name strongly suggests that there is a relationship between Complainant and Respondent’s business, which is not corrected by any explanatory notes to the contrary. Respondent ought to have clearly stated on its website that it does not have a direct relationship with the trademark owner, that the website is not an official website of Complainant. In this Panel’s view, statements such as “[w]e are professional online retailer for selling authentic Birkenstock Shoes, Clogs and Sandals based in Germany and China” are not sufficiently clear disclosure of Respondent’s real status, given all the other indicia used on the website.
In all the circumstances, the Panel finds that Complainant has succeeded in establishing an absence of rights or legitimate interests in the part of Respondent.
Accordingly, the Panel finds that Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy.
The Panel, upon review of the evidence filed in the Complaint and the Response, finds that Respondent registered and is using the disputed domain name in bad faith.
In view of the findings in paragraphs 6(a) and 6(b) above, the Panel finds that Complainant has strong trademark rights in the trademark BIRKENSTOCK, and that Respondent was aware of Complainant’s trademark rights when it registered the confusingly similar domain name. Furthermore, the Panel finds that the disputed domain name reverts to a website which offers for sale shoes featuring the BIRKENSTOCK trademark and trademarks of third party competitors for purposes of monetary gain. The Panel notes that the look and feel of Respondent’s website has been engineered to suggest a direct connection to Complainant’s business, including adoption of the trade name JL Birkenstock Online Shop, all without Complainant’s permission. Taken together, these elements support the conclusion that the disputed domain name has been adopted with the purpose of improperly trading on Complainant’s goodwill in association with the BIRKENSTOCK trademark, when Respondent has not in fact been recognized as an authorized distributor.
Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under the Policy.
Therefore, the Panel finds that Complainant has satisfied the requirements under paragraph 4(a)(iii) under 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 <birkenstock-china.com> be transferred to Complainant.
Christopher J. Pibus
Sole Panelist
Date: August 7, 2012