The Complainant is Alpargatas S.A of São Paulo, Brazil, represented by Murta Goyanes Advogados, Brazil.
The Respondent is Mizuno Brasil of Rio de Janeiro, Brazil / PrivacyP of Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR. (The “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2013. On August 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 20, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on August 23, 2013. On the same date, in response to the Center’s request, the Complainant filed a second amended Complaint.
The Center verified that the Complaint together with the amended Complaints 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 August 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2013.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 23, 2013. 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 is a shoe manufacturer established in 1907 in Brazil, having gained worldwide reputation in view of its Havaianas flip-flops. It is also the exclusive distributor of Mizuno products in Brazil (Annex D to the Complaint), having entered into an exclusive trademark license and distribution agreement with Mizuno over the MIZUNO trademark and products in Brazil (Annex E to the Complaint).
The trademark MIZUNO is registered in Brazil under, among others, No. 006967795 and 006983588, both of July 5, 1978 (Annex F to the Complaint).
The disputed domain name was registered on May 4, 2013 and is currently parked in an automatic website that displays links to tennis shoes resellers and sponsored links related to tennis shoes. 5. Parties’ Contentions A. Complainant
The Complainant claims to be the sole responsible for the publicity, production, transport, storage, security, quality control, after-sales service and development of the distribution network of Mizuno products in Brazil incurring in all of the risks and costs thereof. It also registered several domain names that incorporate the MIZUNO trademark, including (Annex F to the Complaint), as authorized by the licensing agreement.
In the Complainant’s view the disputed domain name is confusingly similar to the MIZUNO trademark given that it reproduces the trademark in its entirety, merely adding “Brasil”, what may lead consumers into thinking that such is the official domain name directed to the Brazilian market.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. no license or authorization of any kind has been given by the Complainant or Mizuno Corporation or Mizuno USA (owners of the MIZUNO trademark throughout the world) to the Respondent to register the disputed domain name, not ever having the Respondent been in a business relationship with the Complainant;
ii. the website that resolved to the disputed domain name displayed the Mizuno trademark in a commercial manner that could suggest that such was the official website relating to that trademark as well as the website did not disclose the Respondent’s (lack of) relationship with the trademark owner (Annex H to the Complaint), thus conveying the false impression that the Respondent is an authorized reseller for the Mizuno products;
iii. the disputed domain name was used in connection with a website that in addition to offering Mizuno products inserted into the Brazilian market through unofficial or unauthorized channels, without the consent of the trademark owner or of its exclusive licensee in Brazil (“grey market” products) also sold or offered for sale competing Adidas products as well as products not relating to clothing such as mobile telephones from Apple and Samsung (Annex H to the Complaint); and
iv. given that the Respondent shielded itself with a privacy protection service it is not possible to suggest that the Respondent is commonly known or associated with the disputed domain name.
In what it relates to the bad faith in the registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the MIZUNO trademark is evident given the reproduction of the MIZUNO well-known trademark and of the Mizuno products on the website that resolved to the disputed domain name, being it only possible to conclude that the Respondent knew about the MIZUNO trademark and reputation, and intentionally used them to its advantage in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established its exclusive rights as a licensee in relation to the Brazilian territory over the MIZUNO trademark (Annex E to the Complaint). This Panel has therefore to address the issue whether the mere licensee qualifies to act as a complainant under the UDRP.
Several panels have already dealt with such question. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) shows, it is consensus view that “[i]n most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants”.
The Complainant has asserted that it indeed is the solely responsible for the publicity, production, transport, storage, security, quality control, after-sales service and development of the distribution network of the Mizuno products in Brazil incurring in all of the risks and costs thereof. It is also the owner of several domain names that incorporate the MIZUNO trademark, including (Annex F to the Complaint), as authorized by the licensing agreement.
This Panel is therefore comfortable in finding that the Complainant has rights in a trademark for purposes of the UDRP in view of its exclusive rights of exploitation of the MIZUNO trademark in the Brazilian territory according to the licensing agreement entered into with the legitimate MIZUNO trademark owners.
Turning now to the disputed domain name, it indeed reproduces the MIZUNO trademark in its entirety merely adding the country name “Brasil”, which can easily lead consumers into thinking that such is the official domain name directed to the Brazilian market, thus not sufficient to avoid a risk of confusion by the Complainant’s customers or Internet users in general.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
i. before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or
iii. the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108). Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed asserts that no authorization or license has been given by the Complainant or Mizuno Corporation or Mizuno USA (owners of the MIZUNO trademark throughout the world) to the Respondent to register the disputed domain name. There is also no evidence that the Respondent has been commonly known by the disputed domain name.
According to the evidence submitted by the Complainant (Annex H to the Complaint) the website that resolved to the disputed domain name displayed the MIZUNO trademark in a commercial manner that in this Panel’s view could suggest that such was an authorized reseller for the Mizuno products targeting the Brazilian market.
Furthermore, the website did not disclose the Respondent’s lack of relationship with the trademark owner (Annex H to the Complaint), which leads this Panel to the conclusion that the Respondent was seeking to create an impression of association with the Complainant, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Lastly, the Complainant’s assertion that the products being offered or sold through the website that resolved to the disputed domain name had been inserted into the Brazilian market through unofficial or unauthorized channels, without the consent of the trademark owner or of its exclusive licensee in Brazil (“grey market” products) as well as the offer for sale of competing products, reinforces the Panel’s finding of a lack of bona fide offering of goods or services or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the MIZUNO trademark and products, as well as the offer for sale of competing products, on the website that resolved to the disputed domain name.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the MIZUNO trademark but also an attempt to misleadingly diverting consumers for its own commercial gain.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. 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 the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: October 3, 2013
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