Complainants are Alpargatas S.A., Brazil and Alpargatas Europe, SL, Spain, represented by PADIMA, Abogados y Agentes de Propiedad Industrial, S.L., Spain.
Respondent is Puya Hariri, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2020. On September 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on September 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on September 21, 2020. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on September 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 5, 2020. The Center appointed John C. McElwaine as the sole panelist in this matter on November 19, 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 Alpargatas S.A., a legal entity formed in Brazil, is the owner of the following three (3) trademark registrations in the European Union: - European Union Trade Mark (“EUTM”) Reg. No. 003772431 for HAVAIANAS (stylized) registered in Class 25 on September 20, 2020. - EUTM Reg. No. 003772431 for HAVAIANAS (and Design) registered in Class 25 on September 29, 2005. - EUTM Reg. No. 008664096 for HAVAIANAS (and Design) registered in Class 25 on April 23, 2010. - EUTM Reg. No. 007156128 for HAVAIANAS registered in Class 25 on March 23, 2009. Alpargatas Europe SL is the exclusive licensee of the HAVAIANAS trademark in Europe. On October 5, 2018, Respondent registered the Domain Name with the Registrar. The Domain Name resolves to a website purporting to sell Complainants’ branded clothing products. 5. Parties’ Contentions A. Complainants Complainants contend that the Domain Name should be transferred because each of the three elements required in paragraph 4(a) of the Policy has been established. With respect to the first element of the Policy, Complainants assert registered trademark rights in the mark HAVAIANAS based upon the three European Union trademark registrations listed above (the “HAVAIANAS Mark”). Complainants allege that the Domain Name is comprised of the well-known HAVAIANAS Mark. With respect to the second element of the Policy, Complainants allege that the following establish that Respondent does not have any rights or legitimate interests in the Domain Name: (i) Complainants have never authorized Respondent to use the HAVAIANAS Mark in the Domain Name; (ii) Respondent has never been commonly known by the name “havaianas”; and (iii) the addition of the geographically descriptive word “Dubai” is evidence of Respondent’s intention to mislead consumers searching for Complainants’ products located in Dubai. With respect to the third element of the Policy, Complainants allege that Respondent registered and used the Domain Name as a commercial website purporting to sell Complainants' branded items, and using Complainants’ trademarks and images without any disclaimer informing about the lack of relationship with Complainants. Complainants assert that Respondent's purpose is to capitalize on the reputation of the HAVAIANAS Mark by diverting Internet users seeking such products in different countries to Respondent’s website for financial gain, by intentionally creating a likelihood of confusion with Complainants’ registered HAVAIANAS Marks as to the source, sponsorship, affiliation, or endorsement of its websites and/or the goods offered or promoted through said website. B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings Even though Respondent did not formally reply to the Complaint, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainants must still prove their assertions with evidence demonstrating: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Because of the absence of a formal Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainants show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights. As an initial matter, Complainants both have standing to bring this proceeding because Alpargatas S.A., the apparent parent corporation, is the owner of the registered trademark rights in the HAVAIANAS Mark, and Alpargatas Europe SL is the exclusive licensee of the HAVAIANAS trademark in Europe. See Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796 (“Paragraph 4(a)(i) of the Policy requires, as one element to be proved, that the disputed domain name be identical or confusingly similar to a trademark or service mark in which Complainants have rights. These words do not require that Complainants be the owner of the mark and would include, for example, a licensee of the mark.”); Kao Brands Company, John Frieda, John Frieda Professional Hair Care Inc. v. Evgeniy Sechin,WIPO Case No. D2010-2247 (As the wholly owned subsidiary of its parent company, Kao Kabushiki Kaisha (also t/a Kao Corporation), the complainant was considered to have rights in the trademarks owned by such parent company); see also section 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)and Yamaha Motor Corporation, U.S.A. v. Domain Admin, Hush Whois Protection Ltd., WIPO Case No. D2018-1359. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2. Complainants have provided evidence here that HAVAIANAS Mark has been registered in the European Union since at least as early as 2005. The Domain Name is wholly comprised of the HAVAIANAS Mark plus the additional word, “Dubai”. It is well-established that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a trademark in a domain name does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. In fact, multiple panels have found that the use of a mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the mark. See, e.g., Playboy Enterprises International Inc. v. Melancia,WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com,WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation. v. South East Asia Tours,WIPO Case No. D2004-0388; America Online, Inc. v. Dolphin@Heart.,WIPO Case No. D2000-0713; Sysco Corporation v. Jose Castaneda,WIPO Case No. D2007-0197; Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437. Here, the addition of “Dubai” does not prevent Complainants’ HAVAIANAS Mark from being recognizable in the Domain Name. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainants’ HAVAINAS Mark in which Complainants possess valid trademark rights under the UDRP. Therefore, Complainants have satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the Policy paragraph 4(a)(ii), Complainants have the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainants need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainants are deemed to have satisfied their burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. Here, Complainants assert that Respondent is not authorized to have registered the Domain Name and set up a website purporting to sell Complainants’ branded clothing products. Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the disputed domain name. See AREVA v. St. James Robyn,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269. Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) 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 Panel finds that Respondent will not be able to show rights or legitimate interests under any of the three conditions. As an initial matter, Respondent cannot satisfy paragraph 4(c)(ii) of the Policy. There is no evidence in the record that Respondent is commonly known by the name “Havaianas”. Complainants also assert that the Domain Name resolved to a website that imitates Complainants by using Complainants’ marks, images and the look and feel of Complainants’ own website and brand. Respondent has not submitted any response to rebut these allegations. The Panel notes that the website displayed at the Domain Name is intended to lead visitors to believe that it is the website for the Dubai location of HAVAIANAS. The website declares, “Wellcome [sic] to HAVAIANAS Dubai”, provides information about the meaning of the HAVAINAS brand name, and list a store location and hours in Dubai. There is no disclaimer on the website disclosing any type of relationship between Complainants and Respondent. The Panel finds that the use of the Domain Name in this manner to divert Internet traffic is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Prior UDRP panels deciding this issue have held that such use of a domain name cannot be a “bona fide offering of goods or services” and is not “fair use of the domain name.” See Microsoft Corporation v. Microsof.com aka Tarek Ahmed,WIPO Case No. D2000-0548 (“by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services.”); see Hulu, LLC v. Helecops, Vinod Madushanka,WIPO Case No. D2016-0365 (finding that an infringing website operating under the name “HuluMovies” does not entail a bona fide offering of services in the sense of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii), without intent for commercial gain to misleadingly divert consumers or to tarnish the HULU mark.) Without a response from Respondent justifying its use of the Domain Name as authorized by Complainants or as fair use, the Panel cannot find Respondent has a legitimate interest. In addition, where a domain name consists of a trademark plus a geographic term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See section 2.5.1 of the WIPO Overview 3.0. In sum, Complainants have made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainants, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, Complainants must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. As detailed above, Respondent registered the Domain Name which is confusingly similar to the HAVAIANAS Mark. There is no explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainants’ trademark or otherwise create a false association with Complainants. With no response from Respondent, this claim is undisputed, and in fact, the addition of the geographic term “Dubai” increases the likelihood of confusion because consumers are likely to believe the Domain Name is for a Dubai location of Complainants’ retail store. As discussed herein, Respondent registered the Domain Name and linked it to a website using Complainants’ HAVAIANAS Mark, copied content and information concerning the HAVIANAS brand and which was intended to appear to be the Dubai retail location of Complainants. This amounts to bad faith use of the Domain Name by Respondent. See Identigene, Inc. v. Genetest Labs,WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang,WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name was to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the HAVAIANAS Mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Thus, the Panel holds that Complainants have met their burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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, John C McElwaine
Sole Panelist
Date: December 3, 2020
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