The Complainant is Vibram S.p.A. of Italy, represented by Avvocati Associati Feltrinelli & Brogi of Italy.
The Respondent is Chen Kang of People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names ; ; and are registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2010. On August 2, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain names. On August 3, 2010, Xin Net Technology Corp. 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”).
Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise. According to information from the concerned Registrar, the language of the registration agreement for the disputed domain name is Chinese. On August 4, 2010, the Center transmitted by email to the parties in both Chinese and English a communication regarding the language of proceedings. On August 6, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. The Panel notes that the disputed domain name resolves to a website with content in English, so it appears that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in
Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties have been transmitted in both Chinese and English. Given the provided submissions and circumstances of this case, the Panel chooses at its discretion to render the decision in English.
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 August 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2010.
The Center appointed Linda Chang as the sole panelist in this matter on September 14, 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.
Due to special circumstances, the Panel has extended the decision due date until October 10, 2010. 4. Factual Background
The Complainant is an Italian corporation, operating in over 120 countries including China, renowned for its rubber footwear products. The Complainant owns a number of international trademark registrations for the trademarks VIBRAM, FIVEFINGERS VIBRAM and FIVEFINGERS in several classes of goods in numerous jurisdictions.
The Respondent registered disputed domain names ; ; and on March 9, 2010. The disputed domain names are used in connection with websites selling Fivefingers and other footwear products. 5. Parties’ Contentions A. Complainant The Disputed Domain Name Is Confusingly Similar to the Complainant’s Trademark
The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademark to which the Complainant has rights.
The Complainant states that it owns several registrations for the trademarks VIBRAM and FIVEFINGERS including the following international trademark registrations:
- FIVEFINGERS (+ device), number 978630, registered on June 20, 2008, in class 25; and
- FIVERFINGERS vibram (+ device), number 917017, registered on January 18, 2007, in class 25;
- VIBRAM, number 337824, registered on June 23, 1967 and duly renewed, in classes 17 and 25;
- VIBRAM (+ device), number 915254, registered on January 30, 2007, in class 12, 26 and 28.
The Complainant asserts that the disputed domain names ; and incorporate the Complainant’s trademark VIBRAM in full, deviates from the mark only with the addition of the generic word with no distinguishing power in the context of the domain names “new shoes”, “pop shoes” and “shoes sale”. Citing precedents: Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441 and Arthur Gutnness 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 the word “pop shoes”, “new shoes” and “shoes sale” does not negate the similarity but increases the risk of confusion for the consumers, as they would believe that the website at the disputed domain names represent the Complainant’s Internet store, or an affiliated or associated business.
The Complainant asserts that the disputed domain name incorporates the Complainant’s trademarks VIBRAM and FIVEFINGERS in full, deviates from the Complainant’s official domain name only with the addition of a hyphen in between the two trademarks and a different generic suffix, “.net”. Citing precedents: Z, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191; Mediaset S.p.A. v. Antonio Esposito, S.C.A. Service Controll Access, Amata International Network Co. Limited, WIPO Case No. D2009-0026; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 the Complainant alleges that the hyphen and the generic suffixes are irrelevant in assessing similarity and contends that the disputed domain name is identical to the official domain name . The Respondent has No Rights or Legitimate Interests in the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the basis of the following reasons:
Firstly, the disputed names do not correspond to a trademark registered in the name of the Respondent. Secondly, the Complainant states that it has never licensed or otherwise permitted the Respondent to use its trademarks or to apply for domain names incorporating its trademarks. Therefore, there is no relationship whatsoever between the Complainant and the Respondent. 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 meet the requirements to claim such interests as a reseller. Thirdly, there is no evidence of any fair or non-commercial uses of the disputed domain names. Registered and Used in Bad Faith
The Complainant contends that the disputed domain names were registered and used in bad faith on the basis of the following reasons:
Firstly, the Complainant states that it is world leader in high performance rubber soles and that its trademarks are distinctive and well-known internationally. Therefore, the Complainant contends that the Respondent knew or should have known of the existence of the Complainant's trademarks VIBRAM and FIVEFINGERS prior to registering the disputed domain name. Citing precedent: America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004, this prior knowledge constitutes bad faith in registration.
Secondly, citing the precedents Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500; The Vanguard Group, Inc. v. Venta, WIPO Case No. D2001-1335, the Complainant argues that the Respondent uses the disputed domain names 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.
Thirdly, the Complainant asserts that the Respondent is using the website connected with the disputed domain names to sell not only original Fivefingers products without authorization but also counterfeits and products of the Complainant’s competitors constitutes further evidence of the Respondent’s bad faith. The Complainant cites the following precedents: Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Rhythm,WIPO Case No. D2001-1295; Fendi Adele S.r.l. v. Mark O’Flynn, WIPO Case No. D2000-1226; GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424; Prada S.A. v. Mark O’Flynn, WIPO Case No. D2001-0368; Revillon S.A. v. Fur Online Inc.,WIPO Case No. D2000-0632; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Jacques Stade, WIPO Case No. DBZ2003-0003; Victoria’s Secret Stores Brand Management, Inc., Victoria’s Secret Stores, LLC, and Victoria’s Secret Direct. LLC v.Sharon Brown and Kenneth Brown,WIPO Case No. D2006-0556. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
There being no Response, under paragraphs 5(e) and 14(a) of the Rules, the Panel, in the absence of exceptional circumstances, decides the dispute on the basis of the Complaint.
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(A) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(C) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the registered owner of the trademarks VIBRAM, FIVEFINGERS and FIVEFINGERS VIBRAM in Italy and many other countries around the world. The Complainant has acquired substantial goodwill in these trademarks.
Compared to the Complainant’s trademark, the disputed domain names completely reproduce the trademarks with the only difference being an addition of a hyphen between the two marks and a different generic suffix for and the mere addition of the generic word “new shoes”, “pop shoes” and “shoes sale” for ; and .
Pursuant to the principle established by numerous prior decisions, for example, Vibram S.p.A .v. Dai Xiu Mei,WIPO Case No. D2010-0846, the Panel holds that the addition of a generic term does not negate the confusing similarity between the disputed name and the Complainant’s trademarks. On the contrary, the terms “new shoes”, “pop shoes” and “shoes sale” is not only generic but also associated with the type of products offered by the Complainant and the Respondent.
Pursuant to the principle established by the precedent cases: Z, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191; Mediaset S.p.A. v. Antonio Esposito, S.C.A. Service Controll Access, Amata International Network Co. Limited, WIPO Case No. D2009-0026, the Panel holds that the hyphen is irrelevant in the comparison, and the generic suffixes are disregarded in assessing similarity. The close similarity to the official domain name of the Complainant strongly suggests that is intentionally similar in appearance to the Complainant’s official domain name, which will cause confusion among the present or potential new consumers.
Given the well-known nature of the Complainant’s trademarks, the popularity of the Complainant’s products, e of the terms “new shoes”, “pop shoes” and “shoes sale”, the Panel finds that the disputed domain names are clearly, and intentionally, confusingly similar to the Complainant’s trademarks. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain names. There is nothing in the record to suggest the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by the disputed domain names, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant’s claims.
The Complainant contends that the Respondent is offering for sale original Fivefingers as well as counterfeits and products of the Complainant’s competitors on the website in connection with the disputed domain names. Given that there is no Response, citing Vibram S.p.A .v. Dai Xiu Mei, supra, the Panel considers it unnecessary to decide if the products on sale are counterfeit in this case.
The Panel bases its decision on the information and evidence submitted before it, and given the circumstances, finds it more likely then not that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has developed a reputation for the trademarks VIBRAM, FIVEFINGERS and FIVEFINGERS VIBRAM in the sport footwear area over the past 70 years, and the Complainant’s trademarked products are sold worldwide including in China. Given the distinctiveness of the Complainant’s trademarks, the Panel finds it unlikely that the Respondent who sells sports footwear would be unaware of the trademarks VIBRAM, FIVEFINGERS and FIVEFINGERS VIBRAM but incidentally chose them as the main part of its domain names. Moreover, the Respondent’s sale of Fivefingers products (original as well as counterfeit as acclaimed by the Complainant) strongly suggests that the Respondent knew of the Complainant’s trademarks prior to registration. Given that the Respondent has not responded, it is reasonable to infer that the aim of the registration of the disputed domain names is to exploit consumer confusion for commercial gain.
In addition, the Respondent’s lack of rights or legitimate interests in the names VIBRAM, FIVEFINGERS and FIVEFINGERS VIBRAM as well as the fact that the disputed domain names have been used to sell not only the Complainant’s original products without authorization but also allegedly counterfeits and products of the Complainant’s competitors, the Panel is convinced that the purpose of the Respondent’s registration of the domain names is to capitalize on the goodwill of the trademarks by merely registering the trademark as a domain names to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating this consumer confusion on the source, sponsorship, affiliation or endorsement of its websites. This behavior constitutes bad faith registration and use of the domain names.
The Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain names in bad faith and has met the requirements of 4(a)(iii) 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 domain names ; ; and be transferred to the Complainant.
Linda Chang
Sole Panelist
Dated: October 10, 2010
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