The Complainant is Buffalo Boots GmbH, Germany, represented by Inlex IP Expertise, France.
The Respondents are Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Jessica Wechsler, Germany; Lindgren Katja and Andersson Hellstrom, Germany; Domain Admin, Whoisprotection.cc, Malaysia / Lisa Bohm, Maria Beich, and Stephanie Maur, Germany; Bjork Melikssa, Calle Svensson, Diana Eisenberg, and Martina Friedman, Germany; and, Web Commerce Communications Limited, Client Care, Malaysia.
2. The Domain Names and RegistrarsThe disputed domain names
The disputed domain names
The disputed domain names
The disputed domain names
The disputed domain name
Mat Bao Corporation, NETIM SARL, Alibaba.com Singapore E-Commerce Private Limited, Hosting Concepts B.V. d/b/a Registrar.eu, and NameSilo, LLC are collectively hereinafter referred to as the “Registrars”. Similarly, the above-listed domain names will be collectively hereinafter referred to as the “disputed domain names”.
3. Procedural HistoryThe Complaint was filed in French with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2021. On September 14, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On September 14, 15, and 16, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrants and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 27, 2021, providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 29, 2021.
The Registrars also indicated that the language of the Registration Agreement was English. The Center sent an email communication to the Complainant on September 27, 2021, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for French to be the language of proceeding, a Complaint translated into English, or a request for French to be the language of proceedings. The Center also invited the Respondent to submit comments. The Complainant filed an amended Complaint in English on September 29, 2021.
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 October 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2021.
The Center appointed Kaya Köklü as the sole panelist in this matter on November 12, 2021. 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 BackgroundThe Complainant is a Germany-based company, which is particularly active in the field of promoting and selling footwear around the world.
The Complainant is the owner of the widely known trademark BUFFALO, which is protected in a large number of jurisdictions. For instance, the Complainant is the owner of the International Trademark Registration No. 669747, registered on December 7, 1996, and No. 1234652, registered on October 22, 2014, both of them covering protection for footwear as protected in class 25 (Annex 3 to the Complaint).
The Complainant further holds and operates its official website at “www.buffalo-boots.com” (Annex 5 to the Complaint).
All disputed domain names were registered on the same day, namely on July 27, 2021.
The Respondents are composed of various individuals and entities, most of them allegedly located in Germany and Malaysia.
The screenshots, as provided by the Complainant (Annex 4 to the Complaint), show that the disputed domain names resolved to websites that all have the same overall design with partly identical pictures and content. On said websites, the Complainant’s word and figurative BUFFALO trademark was prominently used and, thus, created the (false) impression that all these websites are operated by the Complainant itself.
At the time of the decision, the disputed domain names do no longer resolve to active websites.
5. Parties’ Contentions A. ComplainantThe Complainant requests the transfer of the disputed domain names.
The Complainant is of the opinion that the disputed domain names are confusingly similar to its BUFFALO trademark.
It further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
In addition, the Complainant is convinced that the Respondent has registered and is using the disputed domain names in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Procedural IssuesAs neither the Policy nor the Rules provides provisions for the consolidation of claims against multiple respondents into a single administrative proceeding, UDRP panels generally apply the principles for consolidation as set out at section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Section 4.11.2 of the WIPO Overview 3.0 states the following: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281.
In this regard, previous UDRP panels particularly considered the following aspects in determining whether a consolidation is appropriate: similarities in or relevant aspects of (i) the registrants’ contact information (ii) the content or layout of websites corresponding to the disputed domain names, (iii) whether the registrants are targeting a specific sector, and (iv) the relevant language/scripts of the disputed domain names.
In light of the criteria set out above, there are in view of the Panel strong indications that all disputed domain names are under common control.
First, the Panel notes that all disputed domain names were registered the very same day, which in view of the Panel is no coincidence. Second, all disputed domain names were linked to websites with a highly similar look and feel, including content that was partly identical. Third, all disputed domain names are hosted on Cloudflare’s DNS servers and all points to Cloudflare IP addresses.
The Panel concludes that the Respondents must act collaboratively and, hence, accepts that all disputed domain names are under common control. Additionally, the Panel is convinced that in the present case a consolidation of multiple respondents is procedurally efficient, fair, and reasonable to all parties.
The Panel therefore, for the purpose of this decision, accepts the case to be dealt with in a consolidated Complaint and will refer, whenever appropriate, to “the Respondent” in the following.
6.2. Substantive IssuesAccording to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no formal Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
A. Identical or Confusingly SimilarTo begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is the owner of the BUFFALO trademark, which has been first registered more than two decades ago.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s BUFFALO trademark. All disputed domain names fully comprise the BUFFALO trademark. As stated at section 1.8 of the WIPO Overview 3.0, where a trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. In the present case, the mere addition of the term “shoes” (respectively “Schuhe” in the German language or “chaussures” in the French language) combined with a country indication, does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain names and the Complainant’s BUFFALO trademark.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license or alike to use the Complainant’s BUFFALO trademark in a confusingly similar way within the disputed domain names.
In the absence of a Response, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c), or provide any other evidence of rights or legitimate interests in the disputed domain names. On the contrary, the Panel cannot exclude that the disputed domain names may be already used in connection with possibly fraudulent, at least illegitimate activities by the Respondent.
There is particularly no doubt that the Respondent was well aware of the Complainant and its BUFFALO trademark before registering and using the disputed domain names. The Panel is convinced that the Respondent deliberately has chosen the disputed domain names to cause confusion with the Complainant and its footwear among Internet users. Also, the Panel notes that the nature of the disputed domain names carries a significant risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.
Bearing all this in mind, the Panel does not see any basis for assessing a bona fide offering of goods or services by the Respondent.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users for illegitimate purposes, particularly for the following reasons.
At the date of registration of the disputed domain names, the Respondent was apparently well aware of the Complainant and its BUFFALO trademark. It is obvious to the Panel, that the Respondent has deliberately chosen the disputed domain names to target and mislead Internet users who particularly are searching for information and sales offers for the Complainant’s footwear. Consequently, the Panel is convinced that the Respondent has registered the disputed domain names in bad faith.
Additionally, the Panel finds that the Respondent is using the disputed domain names in bad faith. Prominently featuring an identical copy of the Complainant’s word and figurative BUFFALO trademark on the websites linked to the disputed domain names, the overall design of those websites (Annex 4 to the Complaint), and the nature of the disputed domain names all indicate that the Respondent intentionally tried to misrepresent itself as the Complainant and trademark owner to mislead Internet users for probably fraudulent, at least illegitimate purposes.
The fact that the disputed domain names do not currently resolve to active websites does not change the Panel’s findings in this respect. See section 3.3. of the WIPO Overview 3.0.
Taking these facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. The Panel therefore concludes that the disputed domain names were all registered and are being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Kaya Köklü
Sole Panelist
Date: November 26, 2021