The Complainant is Think Schuhwerk GmbH of Kopfing, Austria, represented by Gail & Kollegen, Germany.
The Respondent is Soo Doo of Jakarta, Indonesia.
The disputed domain name <thinkschuhefabrikverkauf.com> (the “Domain Name”) is registered with Register.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2012. On December 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On December 21, 2012, 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 sent an email communication to the Complainant on January 9, 2013 inviting the Complainant to submit additional documents that should accompany the Complaint. On January 11, 2013, the Complainant submitted the missing document to the Complaint.
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 January 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2013.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on February 14, 2013. 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 is holder of various nationally and internationally registered trademarks THINK, amongst them the:
- International Trademark THINK dating from April 8, 2003, which was registered for the classes 18 and 25 in various countries;
- National Trademarks THINK in the following countries: Germany, Japan and New Zealand;
- International Trademark THINK! WELFORMED SHOES FOR NATURAL WALKING which was registered in various countries;
- National Trademark THINK! WELFORMED SHOES FOR NATURAL WALKING in the United States of America;
- National Trademark THINK in Germany;
- International Trademark THINK, which was registered for services in class 25 in various countries.
Additionally, the Complainant demonstrated that it has been exporting shoes labeled “Think” to many countries. The Complainant's shoes have already been sold since the mid 1990s in Europe with a high degree of success. Since the late 1990s the Complainant has been globally active. The Complainant is also omnipresent on the Internet which is proved by googling the word “think” and “shoe”. The Complainant sells annually more than 800.000 pairs of shoes under the above trademarks. It annually carries out several advertising campaigns under the brand “Think”. This also through well-known magazines like “Brigitte” and “Geo”. In 2003, the Complainant ran an advertising campaign with the slogan “Walk Different”. In Germany alone, 461.079 pairs of shoes were sold with the trademark THINK in 2007. From the fall/winter 2005/2006 catalog it can be concluded that more than 600.000 16-page final customer brochures were included in the magazine “Brigitte” and “Geo”. Trademarks containing the word “Think” were protected by several court decisions stating, in particular, that for products like shoes it exists a risk of confusion between the trademark THINK and the signs and/or trademarks Think Green, Think med@ed, Think Square.
The Respondent registered the Domain Name on March 22, 2012. Under the Domain Name the Respondent appears to sell shoes similar to those produced by the Complainant and without disclosing any relationship it may have with the Complainant and its THINK trademarks.
The Complainant is holder of various nationally and internationally registered trademarks THINK, amongst them THINK and THINK! (see Section 4 of the present Administrative Panel Decision).
Additionally, the Complainant has been exporting shoes labeled “Think” to many countries. The Domain Name <thinkschuhefabrikverkauf.com> is confusingly similar to the above mentioned trademarks THINK and THINK!. “Schuhe” means “shoes” in German, therefore a direct connection to the Complainant is given. “Fabrikverkauf” means “factory outlet” or “outlet store” in German. Therefore the word combination “thinkschuhefabrikverkauf” means “thinkshoes factory outlet” and the public assumes that under the Domain Name the Complainant sells its shoes. The words “Schuhe” and “Fabrikverkauf” are only describing parts of the Domain Name, therefore the part “think” has to be compared with the trademarks THINK and THINK!, which are identical. Thus the element “Think” is the distinctive part of the domain name <thinkschuhefabrikverkauf.com> and the risk of confusion between the opposition trademark THINK and the domain name <thinkschuhefabrikverkauf.com> is given. Additionally, the company name of the Complainant is “Think Schuhwerk”. There exists also a likelihood of confusion between “Think Schuhwerk” and the Domain Name <thinkschuhefabrikverkauf.com>.
The Respondent should be considered as having no rights and legitimate interests in respect of the Domain Name that is subject of the Complaint. It is not known under the Domain Name, especially it does not hold a trademark or a service mark similar to the Domain Name. The Respondent and its services also are not known under the Domain Name or a similar denomination. The Respondent uses the page as a platform for trading in shoes and is therefore not making a legitimate noncommercial or fair use of the Domain Name.
The international degree of publicity and renown of the brand THINK is an argument indicating that the Respondent acted in bad faith. The Respondent already knew about the brand Think before registering the Domain Name. The registering party uses the combination “Think” and a description of the products, shoes, sold by the Complainant in the same way that Think does so itself: Think's website is “www.thinkshoes.com”. Hence, the Domain Name was registered with the purpose of copying the website of the Complainant to the furthest extent possible. Should the Respondent not have known about the brand THINK, the Respondent will certainly have determined that THINK is an internationally renowned brand if he would have used a search engine. A search typing in “think”, “think shoes” and “think schuhe” produced “Think shoes” at the top of the search list. Even by just performing a brief search, which is absolutely standard when registering a domain name, the Respondent should have realized that the term “Think” is a brand protected by intellectual property rights. In addition to these circumstances, the specific form of use of the Domain Name also indicates that the Respondent acted in bad faith. On the Respondent's webpage “www.thinkschuhefabrikverkauf.com“ there are shown pictures of shoes. The risk of confusion is made also by the fact that the German language is used for the contents of the website. There are listed several brand names all combined with shoes “Schuhe” and pictures of shoes. The texts all refer to shoes but not all sentences make sense. It is obvious that is blocked by the Respondent to prevent the Complainant from reflecting the trademark THINK and his company name in a corresponding domain name. If the category “Think Schuhe” is clicked on, three shoe models appear and two of them are marked “Think Schuhe…”. If the shoe “Think Schuhe Reduziert” which means “think shoes reduced” is clicked on, there are shown pictures of shoes which appear to be original shoes of the Complainant. It is obvious that the Respondent intends to cause a confusion of the public in relation to the business of the Complainant.
The Complainant request that <thinkschuhefabrikverkauf.com> be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; that
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and that
(iii) the Domain Name has been registered and is being used in bad faith.
In the present proceeding, the Respondent did not submit a response. In view of the Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding “on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.” (see Friedman & Feiger, LLP v. Whois Watchdog, NAF Claim No. 1319476; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009). Besides, it has to be noted that the lack of response makes it difficult for the Panel to reasonably make findings differently from those convincingly argued by the Complainant (see Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493).
It is undisputed that the Complainant is the owner of different trademarks containing THINK.
The Domain Name is not identical with the Complainant's trademarks. Therefore, the question is whether it is confusingly similar to them.
The Domain Name incorporates the Complainant's widely known and distinctive THINK trademarks in its entirety. The addition of the merely generic German terms “schuhe”, “fabrik” and “verkauf” – who give strong associations to the Complainant’s business activity and products – cannot be deemed sufficient to avoid confusion between the Domain Name and the Complainant’s trademarks (see GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; see also Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464: “The use of […] a generic word is an irrelevant distinction, which does not change the likelihood for confusion.”; Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477: “The addition of a common or generic term following a trademark does not create a new or different mark in which Respondent has rights.”). On the contrary, these additions create even a bigger confusion for the public, who will think that under the Domain Name products of the Complainant are sold. Eventually, the company name of the Complainant is “Think Schuhwerk”, which has the similar meaning of the terms “think” and “schuhefabrik” contained in the Domain Name.
Thus, the Panel finds that the Domain Names are confusingly similar to the Complainant’s trademarks pursuant to paragraph 4(a)(i) of the Policy.
From the evidence before the Panel, the Respondent's name is not “Think” or “www.thinkschuhefabrikverkauf.com”. There is no evidence that the Respondent was commonly known by the Domain Name prior to its registration or that after registration of the Domain Name, it has legitimately become known by the Domain Name for reasons beyond of its simple use. The Respondent also does not possess any apparent rights in or to the THINK trademark and the Domain Name was registered only after the Complainant had used its THINK trademarks for over several years. The Complainant provided with its Complaint a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name, in particular that the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services and that it is not making a legitimate noncommercial or fair use of the Domain Name. Therefore, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the Domain Name (see Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630). As in the present proceeding the Respondent failed to submit a Response – a fact that also speaks for a nonexistence of any right or legitimate interest with respect to the Domain Name (see Spenco Medical Corporation v. Transure Enterprise Ltd, WIPO Case No. D2009-1765) – the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
For the above mentioned reasons, the Panel concludes that paragraph 4(a)(ii) of the Policy is established.
When assessing bad faith in the registration requirement, it should be considered (1) whether the Respondent knew or must have known the Complainant and its trademarks (see Janet E. Sidewater v. Worldwide Media Inc., WIPO Case No. D2006-1281), and (2) whether the Respondent intended to target the Complainant or its trademarks to benefit from confusion generated by the similarity between the Domain Name and the trademarks (see Align Technology Inc. v. Web Reg/ Rarenames/ Aligntechnology.Com, WIPO Case No. D2008-0103).
The Domain Name was registered after the Complainant had established the rights in the THINK trademarks for shoes and similar products. Given the use that the Complainant has made of the THINK trademarks and the resulting international reputation that it has acquired for shoes products, and the fact that the Respondent is using the Domain Name to advertise similar products to the Complainant’s, the Panel is convinced that the Respondent must have known the THINK trademarks at the time it registered the Domain Name.
This is confirmed by the fact that the Respondent uses the combination “Think” and a description of the products, shoes, sold by the Complainant in the same way that the Complainant does so itself. In addition, on the Respondent website are also in part shown pictures of shoes which appear to be original shoes of the Complainant.
It is thus demonstrated that by using the Domain Name, the Respondent – by taking advantage of the reputation of the Complainant’s trademark and without adequately disclosing its relationship with the Complainant or its trademarks – has intentionally attempted to attract potential buyers for commercial gain to the Respondent's website, by creating a likelihood of confusion with the Complainant's marks.
This use of the Domain Name has, or has potentially, diverted sales which the Complainant would or may have made through its websites. Although certain Internet users may realize that the Respondent's website is not their intended destination, some visitors might still click on the advertisings on the website rather than navigate away from it. In the Panel’s view, it is therefore demonstrated that the Respondent has deliberately set out to create confusion by registering and using the Domain Name in bad faith.
For the above mentioned reasons, the Panel concludes that paragraph 4(a)(iii) of the Policy is established.
For these reasons the Panel orders that the Domain Name <thinkschuhefabrikverkauf.com> shall be transferred to the Complainant.
Michael A.R. Bernasconi
Sole Panelist
Date: March 14, 2013