The Complainants are Alpargatas S.A, Brazil (the “First Complainant”) and Alpargatas Europe, SL, Spain (the “Second Complainant), both represented by Padima, Spain.
The Respondent is Shuang Hu, Hu Shuang, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2020. On July 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 31, 2020, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2020. The Center received a communication from the Respondent by email on August 3, 2020. The Respondent did not submit any formal response. Accordingly, on August 24, 2020, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Karen Fong as the sole panelist in this matter on September 15, 2020. 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 First Complainant, based in Brazil, is the owner of the trade mark HAVAIANAS and the Second Complainant, based in Spain is its exclusive licensee in Europe. The Complainants are in the business of manufacturing and selling footwear, apparel, and sporting goods. Their portfolio of brands includes HAVAIANAS, a brand of flip flop sandals, beachwear, other apparel, and fashion accessories. For convenience, they will be referred to as the “Complainant” hereafter. The Complainant owns the HAVAIANAS trade marks in many jurisdictions including the European Union. The earliest trade mark submitted in evidence is European Union Trade Mark Registration No. 003772431 in class 5, registered on September 20, 2005 (the “Trade Mark”). The Respondent, based in China, registered the Domain Name on November 11, 2019. The Domain Name resolves to a website, which has explicit adult images and pornographic content and offers gambling services in the Chinese language (the “Website”). 5. Parties’ Contentions A. Complainants The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent The Respondent sent an email to the Center saying it did not understand “the meaning of what you are saying” but did not reply substantively to the Complainant’s contentions. 6. Discussion and Findings 6.1. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case, the Domain Name contains the Complainant’s distinctive Trade Mark in its entirety followed by the dictionary words “always” and “summer” with a hyphen in between each word. The addition of these terms and the hyphens do not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org,WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service,WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic,WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”), which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel finds that the Domain Name is confusingly similar to the Trade Mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following: (i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trade mark 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. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant. The Complainant contends that it has not authorised the Respondent to use the Trade Mark or register the Domain Name or any domain name. Neither is it aware of the Respondent being commonly known by the Domain Name. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. Further, the Respondent’s unauthorised use of the Trade Mark in the Domain Name in relation to a pornographic and gambling website is not bona fide or legitimate noncommercial or fair use of the Domain Name. The Respondent has not filed a formal Response and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement. The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name given the Trade Mark was registered prior to registration of the Domain Name, the Domain Name consists of the Trade Mark together with the words “always summer”, which is descriptive of the characteristics of the Complainant’s products sold under the Trade Mark. It is implausible that the Respondent was unaware of the Complainant when it registered the Domain Name. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith. The Panel also finds that the actual use of the Domain Name is in bad faith. The Website, which has graphic pornographic images and offers gambling services has been set up for the commercial benefit of the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser, or finding it through a search engine would have been looking for a website operated by the Complainant rather than the Respondent. The Domain Name is likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Name. As stated by the panel in Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Pearson Network S.A.,WIPO Case No. D2006-1271, “[i]mplicit in the UDRP is the principle that the use of a domain name constitutes bad faith when a respondent seeks to, or recklessly has the effect of, tarnishing the good name of a complainant whom that respondent wilfully seeks to associate with pornographic material.” This is such a case when the Respondent is falsely associating the well respected HAVAIANAS trade mark with graphic pornographic content and gambling services. It is clear that the Respondent employs the fame of the Trade Mark to mislead Internet users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract Internet users for commercial gain to its Website, by misleading Internet users into believing that the Respondent’s Website is authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under 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 Domain Name Karen Fong
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith. 6.2. Substantive Analysis A. Identical or Confusingly Similar
Sole Panelist
Date: September 29, 2020
Full & Egal Universal Law Academy