The Complainant is Birdies, Inc., United States of America (“United States”), represented by Sideman & Bancroft LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Fu Li, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 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 September 4, 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 September 9, 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 September 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2019.
The Center appointed Jane Seager as the sole panelist in this matter on October 7, 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 is a United States corporation engaged in the business of designing and selling slippers, shoes and other footwear. For use in connection with its footwear products, the Complainant has registered trademark rights for BIRDIES in various jurisdictions throughout the world, including the following:
- United States Trademark Registration No. 5197973, BIRDIES, registered on May 9, 2017;
- United States Trademark Registration No. 5540618, , registered on August 14, 2018;
- European Union Trade Mark Registration No. 017684499, , registered on May 7, 2018; and
- International Trademark Registration No. 1409921, , registered on March 29, 2018, designating Australia, China, Israel, India, Japan, New Zealand, the Republic of Korea, the Russian Federation, Singapore, Switzerland, and the United Kingdom.
The Complainant also owns the domain name from which it operates an online retail website for the sale of its footwear products.
The disputed domain name was registered on July 23, 2019, using a privacy service. At the time of filing the Complaint, the disputed domain name resolved to a website (the “Respondent’s website”) that closely imitated the appearance of the Complainant’s website at “www.”, purporting to be an official retailer for the Complainant’s Birdies footwear products. The Respondent’s website copied the look and feel of the Complainant’s official website, made use of the Complainant’s BIRDIES trademark, used copyrighted photos from the Complainant’s website, and copied text from the Complainant’s website, including the Complainant’s terms of service. The Respondent also purchased Google Ads using keywords tied to the Complainant’s products.
On August 2, 2019, the Complainant’s representatives sent a cease-and-desist letter to the Respondent using contact information displayed on the Respondent’s website. On August 14, 2019, the Complainant’s representatives sent a further cease-and-desist letter to the Respondent via the WhoIs-listed privacy service. The Respondent did not respond to the Complainant’s cease-and-desist letters, or otherwise alter the content of the Respondent’s website.
At the time of this decision, the disputed domain name no longer resolves to an active website. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its BIRDIES trademarks. The Complainant asserts that its trademarks are well known, and are thus entitled to a broad scope of protection. The Complainant states that the disputed domain name wholly incorporates the dominant “bird” portion of its BIRDIES trademarks, being the first four letters of the BIRDIES mark, which is a fanciful pluralization of the word “bird”. The Complainant asserts that the “bird” portion of the disputed domain name is identical in sight and sound to the first four letters of the Complainant’s BIRDIES trademark and is merely an abbreviation of the term “birdies”. The Complainant claims that consumers are likely to be confused by the disputed domain name as “birdblues”, the reverse of “blue birds”, a type of bird, calls to mind the Complainant’s Birdies products, which are distinctly named after different types of birds. The Complainant further submits that the use of the disputed domain name to imitate the Complainant’s official website further affirms the confusing similarity between the disputed domain name and the Complainant’s trademarks.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that it has not granted the Respondent any licence or authorization to use its trademarks. The Complainant asserts that the Respondent is using the disputed domain name in connection with a website that imitates the appearance of the Complainant’s official website. The Complainant claims that the Respondent’s website purports to offer genuine Birdies products, to accept orders, to gather financial information, and to process payments. The Complainant asserts that the Respondent is using the disputed domain name in an attempt to engage in business transactions with third parties by creating a likelihood of confusion with the Complainant and to unduly profit from the Complainant’s reputation and goodwill. The Complainant asserts that the goods offered via the Respondent’s website are counterfeit. The Complainant submits that the Respondent is not commonly known by the disputed domain name.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. Based on the Respondent’s actions, the Respondent had actual knowledge of the Complainant’s rights in the BIRDIES trademarks prior to registering the disputed domain name. According to the Complainant, the disputed domain name is being used for illegitimate and fraudulent purposes. The Complainant states that the Respondent’s website is intended to confuse Internet users looking for the Complainant’s website and falsely purports to sell the Complainant’s Birdies products, all with the intent to fraudulently collect customers’ personal and financial data. The Complainant refers to the Respondent’s purchasing of Google Ads, which further adds to consumer confusion and diversion from the Complainant’s website.
The Complainant requests transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To prevail in its claim, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:
(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 the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the BIRDIES trademarks, as evidenced by the Complainant’s trademark registrations, details of which are provided in the factual background section above.
As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, “[t]he standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. […] While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The disputed domain name incorporates the dominant element of the Complainant’s BIRDIES trademark, i.e., the word “bird”, as its leading element, followed by the word “blues” under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant’s BIRDIES trademark and the disputed domain name both comprise a two-syllable word in plural form leading with the element “bird”. The Panel finds that the disputed domain name comprises a substantial and readily identifiable element of the Complainant’s trademark, and thus is confusingly similar within the meaning of paragraph 4(a)(i) of the Policy. In addition, the Panel’s finding of confusing similarity is affirmed by the content of the Respondent’s website which clearly seeks to impersonate the Complainant; see WIPO Overview 3.0, section 1.7, “[i]n specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation […] may support a finding of confusing similarity”.
The gTLD “.com” may be disregarded for the purposes of comparison under the first element; see WIPO Overview 3.0, section 1.11.1.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel has taken note of screen captures of the Respondent’s website submitted by the Complainant showing that the disputed domain name previously resolved to a website that reproduced substantial portions of the Complainant’s official website, including copyrighted photos, photos of the Complainant’s founders, product images, product descriptions, and even the Complainant’s terms of service. The Complainant alleges that the goods offered for sale via the Respondent’s website are counterfeit.
The Respondent has not come forward with evidence to support a finding that it is an unauthorized reseller of the Complainant’s products, or to otherwise rebut the Complainant’s contentions. Noting that the Respondent has misappropriated copyrighted images from the Complainant’s website, the Respondent failed to respond to the Complainant’s cease-and-desist letters, and has sought to mask its identity through use of a privacy service, the Panel infers that the goods offered for sale via the Respondent’s website are likely to be counterfeit, and that the Respondent’s website is aimed at misleading consumers. Such use of the Complainant’s trademarks and content from the Complainant’s official website creates an appreciable risk that consumers will be misled into disclosing personal and financial details while under a misleading impression that they are at the Complainant’s website. The Respondent’s use of the disputed domain name therefore does not support a finding of rights or legitimate interests in the disputed domain name on the part of the Respondent; see WIPO Overview 3.0, section 2.13, “[p]anels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods […] impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. None of the other circumstances envisaged by paragraph 4(c) of the Policy appears to apply.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
At the time the Respondent registered the disputed domain name, the Complainant had established trademark rights in its BIRDIES mark and had garnered international attention having been featured in several widely-known publications, including Forbes and The New York Times. The Respondent’s knowledge of the Complainant and its trademarks is clear from the use to which the disputed domain name has been put. There is no evidence of there being any relationship that would give rise to a right for the Respondent to register a domain name evoking the Complainant’s trademarks, the Respondent nevertheless proceeded in bad faith to register the disputed domain name.
The Panel finds that by using the disputed domain name as described above, the Respondent sought to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s BIRDIES trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products purportedly offered therein, amounting to bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The fact that the disputed domain name no longer resolves to an active website does not alter the Panel’s above findings. The Panel finds the Respondent’s use of a privacy service, its purchasing of Google Ads to drive traffic to its website, and its failure to respond to the Complainant’s cease‑and‑desist letters to be further indicators of the Respondent’s bad faith. 7. Decision
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 be transferred to the Complainant.
Jane Seager
Sole Panelist
Date: October 18, 2019
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