Complainant is Vibram S.p.A. of Varese, Italy, represented by Avvocati Associati Feltrinelli & Brogi, Italy.
Respondent is wuhuihuang of Quanzhou, Fujian Province, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2011. On May 31, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On June 1, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On June 3, 2011, the Center transmitted by email to the parties in both Chinese and English regarding the language of the proceeding. On the same day, Complainant submitted a request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on June 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 30, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 15, 2011. 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.
Paragraph 11 (a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. The language of the Registration Agreement for the disputed domain name is Chinese. Complainant has filed arguments in support of English being recognized as the language of the proceeding based partly on the observation that the content of the website featured at the disputed domain name is displayed entirely in the English language and that this content is demonstrative of Respondent’s comprehension of the English language. The Center then sent a communication in Chinese and English to the parties advising that the Center would proceed on the basis that Respondent has no objection to Complainant’s request that English be the language of the proceeding in the event that no objection was raised in this regard. Because Respondent did not object by the deadline set by the Center, the Center initiated the administrative proceeding in the English and Chinese languages and sent all further communications to Respondent in the English and Chinese languages. The Center also invited Respondent to submit a response in the English or Chinese language.
The Panel is satisfied that the content of the website at the disputed domain name demonstrates that Respondent comprehends English and is also satisfied that Respondent was extended a fair opportunity in this proceeding given the Center’s permission to file a Response in the English or Chinese language. 4. Factual Background
Complainant Vibram S.p.A. produces and sells rubber soles and shoes which are sold under its VIBRAM and FIVEFINGERS trademarks. Complainant has provided evidence of trademark registrations for its VIBRAM and FIVEFINGERS trademarks in multiple jurisdictions which cover goods in Classes 12, 17, 25, 26, and 28.
The disputed domain name was registered on February 3, 2010. The Registrant of the disputed domain name is identified as wuhuihuang, Respondent in this proceeding. The Registrar for the disputed domain name is identified as HiChina Zhicheng Technology Ltd.
The website featured at the disputed domain name advertise shoes for sale which are categorized under the names “Vibram Fivefingers Mens” and “Vibram Fivefingers Womens”. A heading reading “Vibram Fivefingers Online Outlet” is displayed on each webpage. 5. Parties’ Contentions A. Complainant
Complainant claims to be a world leader in high performance rubber soles which has been in business for 70 years. Complainant states that its “Fivefingers” footwear is distinctive because it is designed to “connect the foot to the earth in a way that is simply not possible in conventional shoes”. Complainant claims to have operations in over 120 countries and claims to maintain commercial and manufacturing locations in the United States of America, Brazil, and Japan and production centers in the United States and China. Complainant maintains that its presence is supported by significant investments in development, advertising, and promotion of its products.
Complainant claims that the disputed domain name is likely to cause confusion due to its incorporation of Complainant’s VIBRAM trademark and the literal element “fivefinger”, which Complainant maintains is confusingly similar to its FIVEFINGERS trademark. Complainant also claims that Respondent is engaged in typosquatting because the disputed domain name differs from Complainant’s trademarks only in its removal of the letter “s” from Complainant’s FIVEFINGERS trademark. Complainant states that Respondent does not have a right or legitimate interest in the disputed domain name because Respondent is not known by the disputed domain name and has not trademarked the literal elements featured in the disputed domain name, and maintains that no license or authorization has been granted to Respondent for use of Complainant’s trademarks. Regarding bad faith, Complainant alleges that Respondent’s registration of the disputed domain name is an attempt to attract Internet users to the website by creating a likelihood of confusion with Complainant’s trademarks and claims that the content of the disputed domain name falsely associates the disputed domain name with Complainant. Moreover, Complainant notes Respondent’s use of the disputed domain name to promote goods identical to those provided by Complainant under its trademarks as further evidence of bad faith use. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has provided evidence of established trademark rights in VIBRAM and FIVEFINGERS which include rights recognized in China, the country cited in WhoIs reports as Respondent’s nation of residence.
The disputed domain name combines Complainant’s VIBRAM trademark in its entirety with the literal element “fivefinger”. The terms are separated by a hyphen.
The “vibram” portion of the disputed domain name is identical to the VIBRAM trademark in which Complainant has rights. It has been held that the incorporation of a trademark in its entirety into a domain name is generally sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue. Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505.
The “fivefinger” portion of the disputed domain name is confusingly similar to the FIVEFINGERS trademark in which Complainant has rights. The exclusion of the letter “s” from the trademark does not create a literal element which is distinctive from Complainant’s FIVEFINGERS trademark.
The incorporation of a hyphen into the disputed domain name does not add any distinction. If anything, the hyphen contributes to a finding of a likelihood of confusion because it accentuates the separate literal elements “vibram” and “fivefinger”, which as noted above are respectively identical and confusingly similar to trademarks owned by Complainant.
The Panel notes that a domain name similar to the one subject of the Complaint which was registered by a third party was found in a prior decision to be confusingly similar to the VIBRAM and FIVEFINGERS trademarks in which Complainant has rights, specifically . Vibram S.p.A. v. Hao Si Co., Ltd. / Li ping / Slan Lau,WIPO Case No. D2010-1525 (“The only difference for the domain name is the presence of the hyphen between the words “vibram” and “fivefingerss” and the addition of an extra “s” at the end of the word “fivefingers”. These minor changes are totally insufficient to distinguish this disputed domain name from the Complainant’s trade marks visually, phonetically and notionally”).
The Panel finds that Complainant has satisfied the requirements of paragraph 4(1)(i) of the Policy. B. Rights or Legitimate Interests
Complaint has registered trademark rights in VIBRAM and FIVEFINGERS which precede the creation of the disputed domain name on February 3, 2010. These rights are recognized in Respondent’s residence country of China, where they can be traced to 1986 (VIBRAM) and 2007 (FIVEFINGERS).
There is no evidence in the record to indicate that Respondent is licensed to use Complainant’s trademarks, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the terms “vibram” or “fivefingers”. The header of each webpage featured at the disputed domain name identifies the website as “Vibram Fivefingers Online Outlet” and the logo used in the header is identical to the logo featured on Complainant’s website. Moreover, the website associated with the disputed domain name does not disclose a relationship between Respondent and Complainant and may therefore be treated as an unfair attempt from Respondent to take advantage of Complainant’s mark. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
It is clear that Respondent must have been aware of Complainant’s trademark rights when registering the disputed domain name given that the disputed domain name combines Complainant’s VIBRAM trademark in its entirety with the literal element “fivefinger”, which is confusingly similar to Complainant’s FIVEFINGERS trademark. Complainant’s VIBRAM trademark has been acknowledged by prior UDRP panels as well-known. See, e.g., Vibram S.p.A. v. Chen Kang,WIPO Case No. D2010-1289 and Vibram S.p.A. v. Peng Zhen,WIPO Case No. D2010-0952. It has been established that the registration of a domain name incorporating a well-known trademark can constitute registration in bad faith, since it is unlikely that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488 (finding bad faith, noting that it was implausible that respondent was unaware of complainant’s trademark PORSCHE when registering ). Given the notoriety and distinctiveness of the VIBRAM trademark and prior rights owned by Complainant in the trademark FIVEFINGERS, the Panel finds that it is implausible that Respondent was unaware of Complainant’s trademark rights when registering the disputed domain name .
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. It is clear from the record that Respondent is aware of Complainant and is using the disputed domain name in bad faith. Specifically, the disputed domain name features goods identical to those offered by Complainant, and these goods are advertised using Complainant’s VIBRAM and FIVEFINGERS trademarks. Moreover, the header of each webpage featured at the disputed domain name identifies the website as “Vibram Fivefingers Online Outlet”. The logo used in the header is identical to the logo featured on Complainant’s website. The use of Complainant’s trademarks on the website and the use of the disputed domain name to sell goods identical to those provided by Complainant is indicative of an intent to deceive consumers into believing that the disputed domain name is somehow associated with, affiliated with, and/or endorsed by Complainant. There is no evidence in the record to refute this conclusion.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 Complainant.
Kimberley Chen Nobles
Sole Panelist
Dated: July 28, 2011
Full & Egal Universal Law Academy