Birkenstock Sales GmbH v. li teng
Claim Number: FA2007001906246
Complainant is Birkenstock Sales GmbH ("Complainant"), represented by David S. Lipkus of Kestenberg Siegal Lipkus LLP, Ontario, Canada. Respondent is li teng ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <birkenstocks.us>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2020; the Forum received payment on July 28, 2020.
On July 28, 2020, NameCheap, Inc. confirmed by email to the Forum that the <birkenstocks.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").
On July 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@birkenstocks.us. Also on July 29, 2020, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has produced and sold footwear under the BIRKENSTOCK trademark in the United States and throughout the world for decades, and owns numerous U.S. trademark registrations for BIRKENSTOCK, including at least one in the form of a standard character mark. Complainant asserts that the BIRKENSTOCK mark has become famous as a result of Complainant's advertising and promotion efforts over many years.
Respondent registered the disputed domain name <birkenstocks.us> in June 2016. The domain name is being used for a website that prominently displays Complainant's BIRKENSTOCK mark and images of its products. Complainant describes the products offered for sale on the website as "discounted, presumably counterfeit, goods." Complainant asserts that Respondent is not commonly known by the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <birkenstocks.us> is confusingly similar to its BIRKENSTOCK mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered or is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP principles as applicable in rendering its decision.
In view of 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <birkenstocks.us> incorporates Complainant's registered BIRKENSTOCK trademark, adding a letter "S" and the ".us" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Garmin Switzerland GmbH v. Simranjeet Singh / Net Care Technologies, FA 1848925 (Forum July 18, 2019) (finding <garmins.us> confusingly similar to GARMIN). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. It is being used for a website that displays Complainant's mark in a manner apparently designed to create the false appearance that it is associated with or authorized by Complainant, and that sells goods alleged by Complainant to be counterfeit (an allegation that has not been challenged by Respondent). Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Thorsten Meyer, FA 1883242 (Forum Mar. 19, 2020) (finding lack of rights or interests arising from website offering counterfeit versions of complainant's products); Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, D2010-0746 (WIPO July 12, 2010) (finding lack of rights or interests arising from website creating false impression of being licensed to sell complainant's products).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered or is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's mark and is using it for a website that conveys a false impression of association with Complainant and sells what are alleged (without challenge) to be counterfeit versions of Complainant's products. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Thorsten Meyer, supra (finding bad faith in similar circumstances); Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, supra (same). The Panel finds that the disputed domain name was registered or is being used in bad faith.
Having considered the three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <birkenstocks.us> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 24, 2020
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