WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Vibram S.p.A. v. Dai Xiu Mei Case No. D2010-0846 1. The Parties
The Complainant is Vibram S.p.A. of Varese, Italy, represented by Avvocati Associati Feltrinelli & Brogi, Italy.
The Respondent is Dai Xiu Mei of Wuhan, Hubei, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2010. On May 26, 2010, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On May 27, 2010, B, Inc. 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 24, 2010.
The Center appointed Douglas Clark as the sole panelist in this matter on July 5, 2010. 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 Complaint was submitted in English while the registration agreement of the disputed domain name is in Chinese.
On May 28, 2010, the Center notified the Parties by email in English and Chinese that both the Complainant and the Respondent would be given an opportunity to provide the Center with comments on the language of the proceedings by May 31, 2010 and June 2, 2010 respectively. Among other things, on the one hand, 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; 2) submit the Complaint translated into Chinese; or 3) submit a request for English to be the language of the administrative proceedings as well as supporting materials as to such request. On the other hand, the Respondent was requested to submit any objections and any supporting materials as why the proceedings should not be conducted in English, otherwise the proceedings may go forward on the basis that the Respondent had no objection to the Complainant's request that English be the language of the proceedings.
On May 31, 2010, in reply to the Notification of Language of the Proceedings, the Complainant submitted via email a request that English be the language of the proceedings as well as supporting materials. The Center acknowledged the receipt of the language submission by the Complainant and kindly reminded the Respondent concerning the language of the proceedings on June 1, 2010. The Respondent did not file any objections to the language request within the specified due date of June 2, 2010. On June 3, 2010, the Center notified the Parties by email in English and Chinese that:
“Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.”
The Center also notified the Complainant and the Respondent that the discretion to decide the language of the proceedings lay with the Panel on appointment. Decision on Language of Proceedings
The domain name registration agreement is in Chinese. According to paragraph 11 of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement”.
In its request for English to be the language of the proceedings, the Complainant provided that the website at the disputed domain name shows only wordings in English language and no Chinese language is used in the whole website linked to the disputed domain name. The Complainant argued that as a result “the Respondent's behavior constitutes a clear demonstration of its comprehension of English Language.” The Complainant also submitted a copy of the printout of the Respondent's website in support of its language request.
The Respondent failed to submit any objection or reply to the Complainant's language request.
As provided by this Panel in Z, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, a panel's decision of the appropriate language of proceedings necessarily balances questions of fairness to the parties with considerations of cost and expedition.
In this case, as reflected by the printout of the Respondent's website at the disputed domain name, all the information there is solely displayed in English. It can be reasonably assumed that the Respondent has the ability to communicate in English in order to conduct the business through the website that is operated exclusively in English. If not, the Respondent was given opportunities to raise his objections over the choice of language requested by the Complainant, but the Respondent failed to respond by the due date. It was explicitly stated in the Notification of Language of the Proceedings transmitted from the Center that if the Respondent failed to file any response by the due date, the proceedings may go forward on the basis that the Respondent had no objection to the Complainant's request.
Considering both Parties have been provided with a fair opportunity to present their case and there can be no unfairness to the Respondent given its assumed competence in English, the Panel therefore holds that in the circumstance of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English. See also, Moncler S.r.l v. Mr. Zhuo Muniao,WIPO Case No. D2009-1330 (Where the respondent's website is operated solely in English, the Panel ruled in favor of the complainant that the respondent is clearly capable of understanding English, and the language of the proceedings shall be English.) 4. Factual Background
The Complainant is an Italian corporation, operating in over 120 countries including China, renowned for its footwear products. The Complainant owns a number of international trademark registrations for the trademarks VIBRAM, FIVEFINGERS VIBRAM and FIVEFINGERS in several classes of goods.
The Respondent registered the disputed domain name on March 24, 2010. The disputed domain name is used in connection with a website selling FiveFingers footwear products. 5. Parties' Contentions A. Complainant
The Complainant's main contentions are summarized below: Identical or Confusingly Similar
The disputed domain name incorporates the Complainant's trademarks VIBRAM and FIVEFINGERS in full, deviates from the marks only with the addition of the generic term “store”. Citing two precedents: Reuters Limited v. Global Net 2000 Inc.,WIPO Case No. D2000-0441 and Arthur Guinness Son & Co. (Dublin) Ltd. v. Steel Vertigogo,WIPO Case No. D2001-0020, the Complainant contends that where a domain name wholly incorporates a complainant's registered trademark, it is sufficient to establish confusing similarity, despite the addition of other words to such marks. The Complainant further alleges that the addition of “store” does not remove the similarity but increases the risk of confusion for the consumers, as they would believe that the website at the disputed domain name represents the Complainant's Internet store, having a connection with the Complainant. Rights or Legitimate Interests
The Complainant contends the Respondent has no rights or legitimate interests in respect of the disputed domain name on the basis of the following reasons. First, the disputed domain name does not correspond to a trademark registered in the name of the Respondent. Second, the Respondent is not associated in any way to the Complainant or its distribution network. To defeat a possible argument that the Respondent has legitimate interests in selling original FiveFingers products as a reseller, the Complainant cites Oki Data Americas, Inc. v. ASD, Inc. ,WIPO Case No. D2001-0903, and argues that the Respondent does not satisfy the requirements to claim such interests as a reseller. Third, there is no evidence of any fair or non-commercial uses of the disputed domain name. Registered and Used in Bad Faith
The Complainant contends that its trademarks are distinctive and well-known. Therefore, the Respondent knew or should have known of the registration and the use of the trademarks VIBRAM and FIVEFINGERS prior to registering the disputed domain name. This prior knowledge constitutes bad faith in registration. Also, the Complainant argues that the Respondent uses the disputed domain name in bad faith because the Respondent has intentionally attempted to attract present and potential new Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trademarks and official website. In addition, the Complainant alleges that the bad faith is evident as the Respondent is using the website connected with the disputed domain name to sell original FiveFigures products without authorization as well as counterfeits.
The Complainant's contention relies on the following precedents: America Online Inc. v. Anson Chan,WIPO Case No. D2001-0004; Motorola Inc. v. NewGate Internet Inc.,WIPO Case No. D2000-0079; Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark or service mark;
(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.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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. A. Identical or Confusingly Similar
The Complainant has shown that it is the owner of trademarks VIBRAM, FIVEFINGERS and FIVEFINGERS VIBRAM in Italy and a number of other countries around the world.
The disputed domain name wholly consists of the Complainant's trademarks VIBRAM and FIVEFINGERS to which a generic word “store” is added. Pursuant to the principle established by numerous prior decisions of UDRP panels, for example, see Koninklijke Philips Electronics N.V. v. NicNax,WIPO Case No. D2001-1245, the panel holds that the addition of a generic term does not negate the confusing similarity between the disputed domain name and the Complainant's trademarks. On the contrary, the disputed domain name does suggest that the Respondent's website is the official Internet store, or at least an affiliated or associated business, which will cause confusion among the present or potential new consumers. See also, Z, Inc. v. Zufu aka Huahaotrade, supra (The panel found confusingly similarity, where a “shop” and a hyphen is added to the trademark of the complainant in the disputed domain name).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
As the Respondent did not provide the Panel with any evidence in support of any rights or legitimate interests to the disputed domain name, the Panel may decide the dispute on the basis of the Complaint and draw negative inference from the Respondent's default. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 4.6; a similar view is illustrated in Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877.
The Complainant contends that the Respondent is offering for sale original FiveFigners as well as counterfeit products on the website in connection with the disputed domain name. Given that the Respondent has not responded, the Panel considers it unnecessary to decide if the products on sale are counterfeit in this case. See Moncler S.r.l v. Mr. Zhuo Muniao, supra (There, this Panel also found it unnecessary to decide if the products offered for sale by the respondent are counterfeit.) Without any evidence provided by the Respondent to show fair or non-commercial use of the disputed domain name, the fact that the Respondent is not authorized by the Complainant to use the trademarks in the disputed domain name and is not associated with the Complainant in any way is sufficient to decide this case.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant contends it has developed a reputation for the trademark VIBRAM in the sport footwear area over the past 70 years and has operated in over 120 countries including China. The Complainant also claims worldwide fame of the trademark FIVEFIGURES by showing that the FIVEFIGURES is only associated with the Complainant when searched on the major Internet search engines and in Wikipedia. The Panel finds it unlikely that the Respondent who sells sports footwear would be unaware of the trademarks VIBRAM and FIVEFINGERS but incidentally choose them as the core part of its domain name.
The Respondent's sale of FiveFingers products (original and counterfeit as alleged by the Complainant) is strong evidence in support of the Respondent's knowledge of the trademarks VIBRAM and FIVEFINGERS prior to registration. Absent any countervailing evidence provided by the Respondent, it is reasonable to infer that the aim of the registration of the disputed domain name is to exploit consumer confusion for commercial gain.
Meanwhile, using the disputed domain name, the Respondent established a website that is not affiliated with the Complainant to sell FiveFingers shoes without authorization. Given the confusing similarity between the Complainant's trademarks and the disputed domain name, it is clear that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating this consumer confusion as to the source, sponsorship, affiliation or endorsement of its website. Therefore, it is evident that the disputed domain name has been used in bad faith.
Accordingly, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the disputed domain name under paragraph 4(a) of the Policy. 7. Decision
For all 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.
Douglas Clark
Sole Panelist
Dated: July 19, 2010
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