The Complainant is Birkenstock Orthopädie GmbH & Co. KG of Vettelschoss, Germany, represented by CMS Hasche Sigle, Germany.
The Respondent is Chen Yanbing of Beijing, the People's Republic of China.
The Disputed Domain Name <birkenstock-uk.net> is registered with Xin Net Technology Corp. and the Disputed Domain Name <birkenstock-us.com> is registered with HiChina Zhicheng Technology Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2010. On May 11, 2010, the Center transmitted by email to Xin Net Technology Corp. and HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Names. On May 12, 2010 and May 13, 2010, Xin Net Technology Corp. and HiChina Zhicheng Technology Ltd. transmitted by email to the Center there verification responses respectively confirming that the Respondent is listed as the registrant and providing the contact details. On May 14, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On May 17, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. 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 the Respondent of the Complaint, and the proceedings commenced on May 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on June 18, 2010. 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.
The Complainant has been making shoes in Germany under the trade mark BIRKENSTOCK since 1774 for over 230 years. It is represented in over 60 countries and is one of the largest manufacturers of shoes and foot health products in the world. The Complainant's trade mark was awarded “the best shoe brand of the year” by an independent London fashion magazine Drapers in 2004.
The Complainant owns various trade mark registrations for the trade mark BIRKENSTOCK around the world including International Registration No. 468797 with a registration date of April 19, 1982. The Complainant operates its principal and international websites under the domain names <birkenstock.de> and <birkenstock.com> respectively. In addition, the Complainant holds other “birkenstock” domain names through its affiliated company.
When the Panel visited the Complainant's website at “www.birkenstock.com” to verify the Complainant's information, it was noted that the website redirects visitors to websites at “www.birkenstockusa.com” and “www.birkenstock.co.uk” for the North American and Great Britain markets respectively. On the websites, the Complainant consistently uses a prominent logo comprising the word BIRKENSTOCK in dark blue above the slogan “Made in Germany ● Tradition since 1774”. The homepage of “www.birkenstockusa.com” comprises the following prominent elements:
a) The above-mentioned logo at the top-left corner;
b) A blue rectangular box containing the words “Welcome to Birkenstock: Log In” at the top-right corner;
c) A brown squarish box under the blue rectangular box containing:
- the large words “What's real?”;
- followed by the description “Cork. Leather. A buckle or two. A simple idea that's made feet happy for over two hundred years. That's the original Birkenstock. Made in Germany since 1774 (with a few minor design tweaks in the meantime). No smoke. No mirrors. No gizmos. You walk, the shoe molds to your foot. You feel good. We feel good. That's the deal.”;
- followed by the lines “Our Shoes” and “Our Heritage”;
d) A photograph of a shopfront embedded with a watermark of the word BIRKENSTOCK under the brown squarish box; and
e) A long brown rectangular box at the bottom comprising the words “Enter your email address to receive updates about new products, sales and exclusive offers:”, a text field and a submit button.
The Disputed Domain Names <birkenstock-us.com> and <birkenstock-uk.net> were registered on March 21, 2010 and April 2, 2010 respectively.
There is no information about the Respondent other than that contained in the WhoIs database relating to and websites resolved from the Disputed Domain Names. In particular, the websites resolved from the Disputed Domain Names purport to offer the Complainant's products and provides “birkenstockus@gmail.com” as a contact email address. The Panel noted the following about the websites resolved from the Disputed Domain Names:
a) The Disputed Domain Name <birkenstock-us.com> displays a prominent logo comprising the words BIRKENSTOCK-US in dark blue above the slogan “Made in Germany ● Tradition since 1774”. A similar logo is displayed at the Respondent's website resolved from the Disputed Domain Name <birkenstock-uk.com> except that the words BIRKENSTOCK-US are replaced with the words BIRKENSTOCK-UK;
b) Both websites of the Respondent contain features a) to e) above found on the Complainant's website at “www.birkenstockusa.com” in correspondingly similar positions;
c) Both websites offer shopping cart facilities for purchasing footwear online.
The Complainant contends that:
1) The Disputed Domain Names are identical or confusingly similar to the Complainant's trade mark;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent does not have a licence to sell the Complainant's products but has created the impression that it has the same. The Respondent is well aware of the Complainant's fame and the Respondent is not commonly known by the Disputed Domain Names; and
3) The Disputed Domain Names were registered and are being used in bad faith. The Respondent acquired the Disputed Domain Names primarily to generate commercial gain by taking advantage of the Complainant's name and reputation. The design, images and text of the Respondent's websites were derived from the Complainant's authorized websites, particularly “www.birkenstockusa.com”. The Respondent created a likelihood of confusion with the Complainant's famous trade mark BIRKENSTOCK and a false impression of selling the Complainant's products.
The Respondent did not reply to the Complainant's contentions.
As the language of the registration agreement is Chinese, the default language of the proceeding should be Chinese. Nevertheless, the Panel hereby determines that English shall be the language of the proceeding pursuant to paragraph 11(a) of the Rules having regard to fairness to the parties and procedural cost-efficiency and expedition for the following reasons:
(1) The Complainant has requested that English be the language of the proceeding;
(2) The Respondent's website under the Disputed Domain Names are in fluent English and is a strong indication that the Respondent is also likely fluent in English;
(3) The Complaint is submitted in English. It would be time-consuming and cost-intensive to require the Complainant to provide Chinese translations of the Complaint and correspondence;
(4) The Respondent has not contested the language of the proceeding; and
(5) It would serve no discernible purpose or benefit in the Panel's view to adhere to the language of the Registration Agreement in this case.
Paragraph 4(a) of the Policy requires the following to be established in order for the Complainant to succeed in this proceeding:
(1) The Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(3) The Disputed Domain Names have been registered and are being used in bad faith.
The Complainant's trade mark registrations for BIRKENSTOCK establishes the Complainant's trade mark rights for purposes of these proceeding. The Disputed Domain Names incorporate the entire mark BIRKENSTOCK. The only difference is the suffix “-us” and “-uk” in the respective Disputed Domain Names. These suffixes are generic country codes for the United States of America and the United Kingdom of Great Britain and Northern Ireland. Read in the context of the word “birkenstock”, the suffixes in the Disputed Domain Names clearly designates the Disputed Domain Names are country websites for the United States (<birkenstock-us.com>) and the United Kingdom (<birkenstock-uk.net>) under the trade mark BIRKENSTOCK.
Numerous panels have applied the principle that a domain name incorporating a trade mark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is confusingly similar to the trade mark (eg, Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144). The Panel is of the view that the suffixes “-us” and “-uk” in the respective Disputed Domain Names are non-distinctive. Therefore, the Disputed Domain Names are confusingly similar to the Complainant's trade mark BIRKENSTOCK. The first limb of paragraph 4(a) is accordingly satisfied.
It is the consensus of past panel decisions that a complainant is only required to make out a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain names before the burden of proof shifts to the Respondent.
The Complainant, being the owner of rights in the trade mark BIRKENSTOCK, has confirmed that it did not grant the Respondent any rights to register or use the Disputed Domain Names. The incorporation of the various elements of the Complainant's website at “www.birkenstockusa.com” in the Respondent's websites resolved from the Disputed Domain Names indicates that the Respondent is well aware of the Complainant and the Complainant's trade mark BIRKENSTOCK. The Respondent is also not commonly known by the Disputed Domain Names. Further, the failure to file a Response reinforces the likelihood that the Respondent has no rights or legitimate interests to put forward.
In the circumstances, a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names is established.
Based on the evidence submitted by the Complainant, this Panel accepts that the trade mark BIRKENSTOCK is prima facie well-known. The prima facie finding remains in view of the absence of a Response.
From the blatant use of the elements from the Complainant's website at “www.birkenstockusa.com”, the Respondent must have had prior knowledge of the Complainant's trade mark rights. The Complainant's trade mark International Registration No. 468797 predates the registration of the Disputed Domain Names by at least 25 years. The selection of the Disputed Domain Names by the Respondent together with the blatant adoption of various elements from the Complainant's website clearly points to a deliberate intent to create an impression of an association with the Complainant. The use of the Disputed Domain Names in such a manner indicates opportunistic bad faith registration and use and takes unfair advantage of the reputation in the Complainant's trade mark (Privatbrauerei Eichbaum GmbH & Co. KG v. Hamit Karaca, WIPO Case No. D2010-0258; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219).
Further, the Respondent's websites offer the sale of products online and are obviously targeted at commercial gain. The facts are such that it leaves this Panel with little doubt that the Respondent by using the Disputed Domain Names, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's websites, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of these websites or of products on the websites within the meaning of paragraph 4(b)(iv) of the Policy.
The third limb of paragraph 4(a) is hereby established as well.
For all 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 <Birkenstock-us.com> and <birkenstock-uk.net> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: July 12, 2010