The Complainant is Birkenstock IP GmbH, Germany, represented by Jonas Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is 冼维法 (Xian Wei Fa), China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant 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 May 27, 2021 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 amendment to the Complaint in English on May 28, 2021. On May 27, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on May 28, 2021. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on June 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2021. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 20, 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 Background A. Complainant The Complainant is a company incorporated in Germany and part of the Birkenstock group, a globally renowned manufacturer and seller of shoes, for many decades, under the trade mark BIRKENSTOCK (the “Trade Mark”). The Complainant, along with other companies of the Complainant’s group, is the owner of numerous registrations for the Trade Mark in jurisdictions worldwide, including International registration No. 468797, with a registration date of March 20, 1982. B. Respondent The Respondent is apparently an individual resident in China. C. The Disputed Domain Names Each of the disputed domain names was registered on the same date, August 23, 2017. D. Use of the Disputed Domain Names The disputed domain names have been resolved to the same English language website, purportedly offering for sale the Complainant’s footwear under the Trade Mark, at heavily discounted prices, and featuring the Trade Mark as well as imagery taken from the Complainant’s official website, but in fact designed to fraudulently induce customers to make payments and provide personal information, without any genuine intention of supplying the Complainant’s footwear (the “Website”). 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain names; and the disputed domain names have been registered and are being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding. The Complainant has requested that the language of the proceeding be English, for several reasons, including the fact the Website is an English language website. The Respondent did not file a response and did not file any submissions with respect to the language of the proceeding. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in the English language. The Panel also notes that the relevant case related communications were sent in both English and Chinese and that the Respondent did not reply to any of those communications. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2. Substantive Elements of the Policy The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration. The disputed domain names incorporate the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the words “online”, “outlet”, “sale” and “store”, respectively. Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8). The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption. The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in respect of the Website, which has not been authorised by the Complainant, and which ostensibly offers the Complainant’s footwear at heavily discounted prices, but, according to the evidence submitted by the Complainant, is in fact a scam website set up to fraudulently elicit payments and personal details from customers, without any intention of delivering the Complainant’s footwear to them. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. In addition, the panel notes that “.cc” is the ccTLD for the Cocos (Keeling) Islands, but there is no evidence before the Panel to suggest that the Respondent, apparently a Chinese national, has anything to do with the Cocos (Keeling) Islands. The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith In light of the manner of the use of the disputed domain names highlighted in Section 6.B. above, the Panel finds that the requisite element of bad faith has been made out. The Panel therefore finds that the disputed domain names have been registered and are being used in 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 names Sebastian M.W. Hughes
Sole Panelist
Dated: August 3, 2021
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