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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marko Schuhfabrik GmbH v. Mercom Group
Case No. D2007-1007
1. The Parties
The Complainant is Marko Schuhfabrik GmbH, Kopfing, Austria, represented by Gail & Rodl Rechtsanwalte, Germany.
The Respondent is Mercom Group, Canoga Park, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <think-shoes.net> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2007. On July 12, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 13, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2007.
The Center appointed Alan L. Limbury as the sole panelist in this matter on August 30, 2007. 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
Since the mid 1990s in Europe and, since the late 1990’s elsewhere, including in the United States of America, the Complainant has sold and promoted shoes under the brand “Think!” and the slogan “Shoes by Think”. It is the registered proprietor of numerous THINK trademarks, the earliest of which is dated April 8, 2003, and of the logo mark “THINK! WELLFORMED SHOES FOR NATURAL WALKING”, in which the dominant feature is the word “THINK!”. That mark was registered in many countries in 1991 and in the United States of America on February 20, 2002. The Complainant operates a website at “www.thinkshoes.com”.
The disputed domain name was registered on May 3, 2006. It resolves to a website entitled “Think Shoes – Comfort shoes for women by Think”, which promotes “B-shoes” and invites users to visit links leading to shoes sold by Bertini, including shoes of competitors of the Complainant.
5. Parties’ Contentions
The Complainant says the disputed domain name is confusingly similar to its trademarks THINK and THINK! WELLFORMED SHOES FOR NATURAL WALKING; that the Respondent has no rights or legitimate interests in the disputed domain name because it is not known under that name, it holds no trademark similar to it and it uses the web page as a platform for trading of shoes and is therefore not making a legitimate non-commercial or fair use of the domain name.
The Complainant says the domain name was registered and is being used in bad faith because the Complainant’s “Think” brand of shoes is internationally known and the Respondent must have known of it, since it has modeled its website and the slogan “Comfort shoes for women by Think” so as to copy, as closely as possible, the Complainant’s web address and its slogan “Shoes sold by Think”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 the Complainants to 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,
WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman,
WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al.,
WIPO Case No. D2000-0848.
A. Identical or Confusingly Similar
The top level domain “.net” is not to be taken into account when considering whether the domain name is identical or confusingly similar to the trademark: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429.
Many cases have established that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR,
WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,
WIPO Case No. D2001-0505; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662; Koninklijke Philips Electronics N.V. v. In Seo Kim,
WIPO Case No. D2001-1195; Energy Source Inc. v. Your Energy Source, NAF Case No. FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc.,
WIPO Case No. D2001-1121, and the cases there cited. See also the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000).
The word think is of course an ordinary English word. In the field of shoes, however, it is distinctive of the Complainant’s business. Accordingly the disputed domain name <think-shoes.net> is confusingly similar to the Complainant’s registered THINK and THINK! WELLFORMED SHOES FOR NATURAL WALKING marks, the dominant feature of the latter being the word “THINK!” Confusion in this context, in the sense of bewilderment or failing to distinguish between things, is a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Jason Trevenio,
WIPO Case No. D2007-0648.
The Complainant has established this element of its case.
B. Rights or Legitimate Interests
Panels have consistently found that the burden is on the Respondent to provide evidence of its right or legitimate interest under paragraph 4(c) of the Policy. See for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,
WIPO Case No. D2004-0753. That burden arises once the Complainant establishes a prima facie case against the Respondent.
The Complainant has established that case by showing that its trademarks are distinctive in relation to shoes, that the Respondent is promoting shoes under the domain name and by the assertions that the Respondent is not known by the domain name nor has any trademark in or other rights to that name. No response to that case was made by the Respondent.
Accordingly, there being no evidence to the contrary, the Complainant has established this element of its case.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that the following circumstance shall be evidence of both registration and use of a domain name in bad faith, namely “by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your 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 your web site or location or of a product or service on your web site or location”.
The panel finds that this is exactly what the Respondent has done. Accordingly, the Complainant has established this element of its case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <think-shoes.net> be transferred to the Complainant.
Alan L. Limbury
Dated: September 13, 2007