The Complainant is Fitflop Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is yan cai a.k.a caiyan of Chengde, Hebei, China. 2. The Domain Names and Registrar
The disputed domain names , , , and (the “Disputed Domain Names”) are registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2011. On September 27, 2011, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On September 28, 2011, 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. On September 29, 2011, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On September 29, 2011, the Complainant requested that English be the language of proceedings. The Respondent did not comment on the language of proceedings 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 the Respondent of the Complaint, and the proceedings commenced on October 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on December 5, 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. 4. Factual Background
The Complainant has been manufacturing and selling footwear under the trade marks FITFLOP and FITFLOPS (the “FITFLOP Marks”) since 2007. The footwear is currently sold in more than 50 countries through authorized retailers and the Complainant’s online store under the domain name . The Complainant’s website was first launched in May 2007 and transactional e-commerce was added in August 2010. The website averages almost 200,000 visitors per year from around the world. The Complainant’s website prominently features the following stylized representative of the FITFLOP Marks (the “FITFLOP Logo”) at the top left corner:
The Complainant’s products under the FITFLOP Marks have been featured very positively in Newsweek, , the Independent Newspaper (UK) and Oprah’s List. The Complainant’s most popular product under the FITFLOP Marks is a limited edition Gladiator Sandal sold exclusively on high fashion site “Net-a-Porter”.
The Complainant owns various trade mark registrations around the world for the FITFLOP Marks including:
Jurisdiction Trademark No. Registration date
United States
3360662
December 25, 2007
Community Trade Mark
4801817
February 23, 2007
International Registration
925375
May 29, 2007
The Disputed Domain Names were all registered between July 28, 2011 and August 30, 2011. As around the time of the Complaint, all the Disputed Domain Names except resolved to websites which purportedly provided online store facilities for purchase of footwear under the FITFLOP Marks (Annex L to the Complaint). All the websites featured the FITFLOP Logo at the top left corner. At the time the Center notified the Complainant to the Parties, the website at the Disputed Domain Name also provided online store facilities for footwear sale under the FITFLOP Marks.
The Panel was redirected to other domain names incorporated the word “fitflop” when the Panel entered each of the 4 Disputed Domain Names into the address bar of a browser (IE9). These redirected domain names were:
Disputed Domain Name Redirected Domain Name
Except for , the websites resolved from these redirected domain names also featured the FITFLOP Logo at the top left corner. The redirected domain name resolved to a website which featured a different logo but which also featured the word “fitflop” prominently. All redirected websites purportedly provided online store facilities for purchase of footwear under the FITFLOP Marks.
The websites resolved from the Disputed Domain Names did not contain any disclaimer of affiliation with the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
a) The Disputed Domain Names are confusingly similar to the FITFLOP Marks. The additions to the word FITFLOP in the Disputed Domain Names are generic terms which do not distinguish the Disputed Domain Names from the FITFLOP Marks;
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Names. The Respondent has never had any relationship with the Complainant and is not authorized to use the FITFLOP Marks. The Respondent is not commonly known by the Disputed Domain Names; and
c) The Respondent registered and is using the Disputed Domain Names in bad faith. The Respondent is using the Disputed Domain Names to sell unauthorized and non-genuine products and to falsely suggest a connection with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the proceedings
The Complainant requests that the proceedings be conducted in English even though the default language of the proceedings should be Chinese in view of the language of the registration agreement being in Chinese. Having regard to circumstances, in particular the following, the Panel determines that English be adopted as the language of the proceedings:
a) The websites resolved from the Disputed Domain Names whether directly or by redirection were entirely in English. The Respondent is clearly proficient in English or has the means to deal adequately with the English language;
b) The Complaint has already been submitted in English and the Respondent has chosen not to respond to the same; and
c) There does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceedings and it is likely that delay to the proceedings would result should parties be required to re-submit documents in Chinese. 6.2. Discussion
In order to succeed in the proceedings, the Complainant must establish all 3 limbs of paragraph 4(a) of the Policy. The Panel proceeds to consider each of these limbs below. A. Identical or Confusingly Similar
The Panel has no doubts that the Complainant clearly has trademark rights in the FITFLOP Marks. All the Disputed Domain Names incorporate the FITFLOP Marks in its entirety. The only difference between the Disputed Domain Names and the FITFLOP Marks is the addition of suffixes as follows:
Disputed Domain Name Suffix Panel’s Comments
“onsale”
This refers to products being on sale
“pascher”
This means “cheap” in French
“saleaustralia”
This refers to products being on sale in association with a geographical reference to Australia
“uksale”
This refers to products being on sale in association with a geographical reference to the UK
It is a consensus view of past panel decisions that domain names which incorporate a trademark in its entirety with suffixes or prefixes which are generic descriptors remain confusingly similar to the trademark. The Panel does not see any special circumstances of the case which demands a different position. It is therefore held that the Disputed Domain Names are confusingly similar to the Complainant’s FITFLOP Marks and the first limb of paragraph 4(a) is established. B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no past or present relationship and that the Respondent is not authorized to use the FITFLOP Marks. There is nothing in the facts before the Panel to suggest that the Respondent has any rights or legitimate interests in the Disputed Domain Names. The Respondent is evidently using the Disputed Domain Names for commercial purposes and such use does not justify any suggestion that the Respondent has some right or legitimate interest. Therefore, the Complainant has shown a prima facie case of the lack of any rights or legitimate interests of the Respondent in the Disputed Domain Names. In the absence of a response, the prima facie case remains and the second limb of paragraph 4(a) is made out. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides an example of bad faith registration and use as follows:
“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 evidence strongly suggests that the websites resolved from the Disputed Domain Names are for commercial gain. The Complainant has also confirmed in the evidence that the goods offered for sale at these websites are unauthorized and do not form part of the Complainant’s distribution chain for products under the FITFLOP Marks.
The Respondent must have been aware of the FITFLOP Marks at the time of registering the Disputed Domain Names. The Disputed Domain Names were registered some years after the trademarks of the Complainant were registered. The same FITFLOP Logo found on the Complainant’s website is adopted in a prominent way on the websites resolved from the Respondent’s website. The FITFLOP Logo featured prominently on the website resolved from and at the time of the Complaint and the respective redirected domain names and . The FITFLOP Logo featured prominently on the website resolved from , the domain name redirected from . The FITFLOP Logo also featured prominently on the website resolved from at the time of the Complaint, and the website resolved from , the domain name subsequently redirected from , also features a logo based on the FITFLOP Marks.
It has already been established above that the Disputed Domain Names are confusingly similar to the FITFLOP Marks. The inescapable conclusion is that the Respondent has an intention to attract Internet users by creating a likelihood of confusion with the FITFLOP Marks as to the source, sponsorship, affiliation, or endorsement of the websites resolved from the Disputed Domain Names.
The circumstances fall squarely within the situation envisaged in paragraph 4(b)(iv) of the Policy and the Panel holds that the third limb of paragraph 4(a) is established as well. 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 domain names, , , , and , be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: December 19, 2011
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