The Complainant is Converse, Inc. of Andover, Massachusetts, United States of America (the "USA"), represented by FairWinds Partners, LLC, USA.
The Respondent is Holger Doelle of Berlin, Germany. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with United-domains AG (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2014. On September 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 25, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 2, 2014.
According to the information the Center received from the concerned Registrar, the language of the registration agreement for the disputed domain name is German. Therefore, the Complainant was requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into German; or 3) submit a request for English to be the language of the administrative proceedings. Such request shall include arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English. The Complainant submitted a request that English be the language of the proceedings, to which the Respondent did not reply.
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") approved by doMEn, d.o.o. ("doMEn"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") approved by doMEn, 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 in English and in German the Respondent of the Complaint, and the proceedings commenced on October 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2014. On October 27, 2014, the Center received a request from the Complainant to suspend the proceedings. Accordingly, the proceedings were suspended until November 28, 2014. The request to stay proceedings was written in the English language and was signed by both parties. On November 28, 2014 the suspension of the proceeding was extended until December 28, 2014. On December 23, 2014, the Complainant notified the Center that the parties have been unable to resolve the dispute amicably and requested that this matter be re-instituted. The Center notified the parties that the proceedings have been re-instituted as of December 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default.
The Center appointed Andrea Mondini as the sole panelist in this matter on January 9, 2015. 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 language of the registration agreement for the disputed domain name is German. The Complainant submitted in paragraph 8 of the Complaint a supported request that these proceedings take place in the English language. The Complainant asserted in particular that the Respondent's social media pages on " and " are in the English language which shows that the Respondent is capable of communicating in the English language. The Panel notes that the text of the request to stay proceedings which has been filed with the Center was written in the English language and was signed by both parties. This shows in the Panel's view that the Respondent is indeed capable and willing to communicate in the English language. Therefore, according to Rule 11(a), the Panel determines that these proceedings shall be conducted in the English language. 4. Factual Background
The Complainant and its related entity are the owner of the CHUCKS trademarks (the "CHUCK Marks"). Amongst other, the Complainant and its related entity own the registrations of the trademark CHUCKS for footware and apparel in the USA (US Reg. No. 1473292 in Class 25, filed 21 May 1987), in the European Union (Community Trademark Reg. No. 8956419 in Classes 18, 25 and 35, filed16 March 2010) and in Germany (German Reg. No. 30446120 and 30471734 in Class 25).
The CHUCKS Marks predate the registration of the Domain Name.
The Respondent posted a website under the Domain Name offering not only products bearing the CHUCKS Marks, but also products from other companies such as Adidas, Lonsdale, Vans, and meLovely (Annex F to the Complaint). The Domain Name's website contains an emblem stating that the Respondent is "Official Dealer No. 5001". 5. Parties' Contentions A. Complainant
The Complainant contends that for many years, and long prior to the registration of the Domain Name, the Complainant commenced use of the CHUCKS Marks in connection with the design, advertising, distribution and sale of footwear, apparel, and related products and services. Since the inception of the CHUCKS Marks, Complainant has continually used such Marks in the USA and in international commerce. Founded in 1908, Complainant is one of the world's most famous designers and sellers of footwear, apparel and athletic equipment, and sells its goods through its own retail stores and the retail stores of other companies around the world through its CONVERSE brand. Its Chuck Taylor line of shoes was first produced in 1917, the name "Chuck Taylor" has appeared on this line of shoes since 1922, and has since grown to become the Complainant's most popular shoe line amongst consumers. Then, in 1987 the Complainant formally began use of its CHUCKS Marks as a more colloquial version of its famous CHUCK TAYLOR brand.
The Complainant contends that the Domain Name is confusingly similar to its CHUCK Marks.
The Complainant further contends that the Respondent has no rights or legitimate interest in the Domain Name because:
- in addition to CHUCK TAYLOR branded goods, the Respondent's website offers products from other companies such as Adidas, Lonsdale, Vans, and meLovely which either compete with the Complainant's goods or are completely unrelated thereto;
- the Respondent's site contains an emblem falsely stating that the Respondent is "Official Dealer No. 5001";
- the Respondent is not commonly known by the Domain or the name "Chucks" and is not making a legitimate noncommercial or fair use of the Domain Name.
The Complainant also contends that the Respondent registered and uses the Domain Name in bad faith because the Respondent was on actual notice of the Complainant's rights in its world-famous CHUCKS Marks and is using the Domain Name to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's website. B. Respondent
The Respondent has not filed a Response and thus has not denied the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the CHUCK Marks. The Panel finds that the Domain Name clearly is confusingly similar to the CHUCKS marks. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Although the complainant bears the ultimate burden of establishing this element of paragraph 4(a) of the Policy, panels have recognized that this could result in the potentially impossible task of proving a negative proposition. Such a proof requires information that is primarily within the knowledge of the respondent. Therefore, the common view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the Complainant has established a prima facie showing indicating the absence of such rights or legitimate interests. See, e.g. Document Technologies Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 .
In the present case, the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed Domain Name.
The Respondent resells the Complainant's goods on the website posted under its Domain Name. The panel in the seminal case Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001- 0903, formulated a test for determining whether a reseller can be making a bona fide offering of goods and services and thus has a legitimate interest in the disputed domain name. Under this test, the conduct of a respondent must comply with all of the following requirements:
(1) the respondent must actually be offering the goods of the complainant;
(2) the respondent must use the website to sell only the trademarked goods of the complainant;
(3) the website of the respondent must accurately disclose the registrant's relationship with the trademark owner; and
(4) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
This test has also been accepted in ".me" decisions. See, Clipsal Australia Pty Ltd v. DIGITCOM Technology,WIPO Case No. DME2011-0011 ("the Panel will consider the Oki Data elements as outlined above").
In the present case, assuming the CHUCKS branded goods sold at the Respondent's website are genuine products, the Respondent still fails the second and third prongs of the Oki Data test.
In fact, in addition to CHUCKS branded goods, the Respondent's website offers products from other companies such as Adidas, Lonsdale, Vans, and meLovely which compete with the Complainant's goods or are completely unrelated thereto. As such, the Respondent is promoting third-party goods and not only the products of the Complainant. Such third-party promotion is outside the boundaries of the second Oki Data prong.
As to the third Oki Data prong, there is no disclaimer or notice on the Respondent's site that in any way discloses that many of the goods offered at that website do not originate from, and are not authorized by the Complainant. To the contrary, the site contains an emblem stating that the Respondent is "Official Dealer No. 5001" when this is false according to the Complainant's contention which has not been disputed by the Respondent. Such lack of a proper disclosure of the registrant's relationship with the trademark owner runs afoul of the third prong of the Oki Data test.
In light of the above, Respondent's use of the Domain Name is not bona fide nor legitimate under the Oki Data standards.
Next, Respondent is not commonly known by the Domain Name or the name "Chucks" and so its actions do not fall within paragraph 4(c)(ii) of the Policy and is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain, and so its actions do not fall within paragraph 4(c)(iii) of the Policy.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Respondent obviously was on actual notice of the Complainant's rights in its CHUCKS Marks through the Complainant's extensive prior use thereof. In fact, the content on the Respondent's website reveals that the Respondent has actual knowledge of the CHUCKS Marks and the Complainant's goods associated therewith.
Respondent has used the Domain Name for the purpose of intentionally attracting for commercial gain Internet users to the Respondent's website, to sell not only products bearing the CHUCKS Marks but also competing products.
In addition the Respondent falsely stated on its website to be "Official Dealer No. 5001". The Panel thus finds that the Respondent registered and is using the Domain Name 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 name be transferred to the Complainant.
Andrea Mondini
Sole Panelist
Date: January 16, 2015
Full & Egal Universal Law Academy