birkenstock_main030612-134x150The shoe company Birkenstock recently won a UDRP claim for the domain name www.birkenstock-china.com. The decision is interesting particularly in terms of how UDRP panels look at cases that involve genuine goods sold by third party resellers on the Internet.

The facts of the case are pretty straightforward. The Respondent, JL Innoways Co., registered the domain name www.birkenstock-china.com in 2007 and began using the site to sell footwear such as Birkenstock brand goods and others (including competitor products) in 2009. The Complainant, Birkenstock, a German company that has been in business for over 200 years and has trademark registrations all over the world (including China), sought to stop JL Innoways Co. from using the domain name and selling Birkenstock goods via the website.

The biggest issue facing the panel was whether the fact that the Respondent was selling genuine goods gave it a legitimate right or interest in using the BIRKENSTOCK name as part of the domain. To assess this the panel adopted a three-part test from WIPO Overview 2.0 and the Oki Data Americas, Inc. v. ASD Inc. UDRP decision which requires the Respondent to meet the following criteria when using a domain name in association with bona fide goods:

  1. offering genuine goods at issue; 
  2. using the website to sell ONLY the disputed brand’s goods; and
  3. large disclosure statement that site is not associated with brand. 

The panel found that the Respondent failed nos. 2 and 3 above because it was selling competitor products on the site (in addition to Birkenstocks) and that the site’s statement “[w]e are professional online retailer for selling authentic Birkenstock Shoes, Clogs and Sandals based in Germany and China” was not clear enough in light of the fact that the Respondent created a site that adopted the look/feel of a Birkenstock website including adopting the name JL Birkenstock.

Selling genuine goods via a website which uses the name or mark of a famous brand as part of the domain name is not always prohibited. But in order to do so it has become increasingly clear that the user must, at the very least, meet the requirements put forth in Oki Data in order to show that it is not attempting to take advantage of associating itself with the name or mark in the domain.

The Oki Data test however should not be viewed in absolute terms, as there appears to be wiggle room where there are honest mistakes and no clear attempt by the Registrant to deceive users as to the source of the website. For example, in a recent UDRP case a Panel denied transfer of the domain www.usedaltecbuckettrucks.com on the basis that the Registrant was using the ALTEC mark to fairly describe the site – not simply to take advantage of the mark...