The Complainant is Alpargatas S.A., Brazil, represented by Murta Goyanes Advogados, Brazil.
The Respondent is Wanasa Theepangkorn, Bare Feet Co., Ltd., Thailand. 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 17, 2020. On September 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 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 October 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2020. The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 10, 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 Complainant is a Brazilian company established in 1907 that manufactures and sells sandals and other footwear. The Complainant’s products are sold in numerous countries worldwide and are heavily advertised and promoted in magazines, newspapers, airports and other sites. The Complainant has registered trademarks in more than 30 countries for HAVAIANAS, in most instances standing alone. The list of trademarks runs to some 36 pages. The following are representative for the purposes of this proceeding: HAVAIANAS, Brazilian Trademark Office, registered October 30, 1984, registration number 811181197, in class 25; HAVAIANAS, Thailand Department of Intellectual Property, registered August 20, 2018, registration number 201103175, in class 25; HAVAIANAS, United States Patent and Trademark Office, registered March 21, 2006, registration number 3069819, in class 25; HAVAIANAS, United States Patent and Trademark Office, registered March 21, 2006, registration number 1858280, in class 25; HAVAIANAS, European Union Intellectual Property Office, registered March 23, 2009, registration number 007156128, in class 25. The Complainant also owns 117 domain names incorporating its trademark, including Background information is not available in respect of the Respondent, except for the contact details provided for the purpose of registration of the disputed domain name, which was registered on June 23, 2015. The website to which it resolves has recently displayed a notice stating, “Our website is currently undergoing scheduled maintenance”. 5. Parties’ Contentions A. Complainant The Complainant’s contentions include the following. The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name comprises the Complainant’s trademark followed by the geographical identifier “Thailand”, which the Complainant submits is not distinguishing. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant says it has not authorised the Respondent to register the disputed domain name, does not authorise the use of its trademark by the Respondent, and has no current business relationship with the Respondent. The Complainant submits that although the word “Havaianas” is a dictionary word in Portuguese, meaning “Hawaiian”, that in itself does not give rights or legitimate interests to the Respondent, which is not using the disputed domain name in a way related to the dictionary meaning. The Complainant says there is no evidence the Respondent is using or intending to use the disputed domain name in connection with a bona fide offering of goods or services, or is using it at all. There is no legitimate fair or noncommercial use of the disputed domain name. There is no evidence the Respondent is commonly known by the trademark HAVAIANAS, which has been the Complainant’s registered United States trademark for 21 years. The Complainant says the disputed domain name was registered and is being used in bad faith. The Complainant cites paragraph 4(b)(ii) of the Policy, referring to the registration of a disputed domain name in order to block the trademark holder from doing so, which incorporates the proviso that the Respondent has engaged in a pattern of such conduct. The Complainant submits that, in certain previous cases under the Policy that it cites, this proviso has not necessarily been applied, for instance if the trademark is well known. The Complainant submits that the provisions under pararaph 4(b) of the Policy are without limitation and that bad faith may be found in other circumstances. The Complainant has itself registered domain names in the format of “havaianas” followed by a geographical identifier, thus: The Complainant submits that non-use of the disputed domain name, or its resolution to a maintenance page, does not necessarily prevent a finding of registration and use in bad faith, depending on the totality of the circumstances. The Complainant has cited previous decisions under the Policy that it considers supportive of its position. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that: “(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith.” The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar Whilst the Complainant has not provided copies of representative registration documents in respect of any of its comprehensive portfolio of international trademarks running to some 36 pages, since key registration details have been provided and the matter is uncontested, the Panel accepts for present purposes that the Complainant has the requisite rights in the trademarks listed in section 4 above. The disputed domain name The Complainant has stated a prima facie case to the effect that it has no current business relationship with the Respondent, has not authorised the use of its trademark by the Respondent, and has not authorised the Respondent to register the disputed domain name. Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation: “(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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 can find no evidence or reason to expect that the Respondent may be using or intending to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate fair or noncommercial purpose, or that the Respondent as an individual or as a business is commonly known by the disputed domain name. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) 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 website or location or of a product or service on your website or location.” The website to which the disputed domain name has recently resolved shows it currently to be out of use, owing to claimed maintenance. The Respondent’s objective in registering the disputed domain name is therefore not immediately obvious but may be reconstructed from the available evidence. A brief Google search for the Respondent’s name was conducted, as permitted under section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The search yielded an entry corresponding to the registration details of the disputed domain name, with a location in or geographically coincident with the Siam Motors Co., Ltd., building in Bangkok. The usual additional business information of business hours, website, and category had not been provided. The entry for the Respondent did not project any activity except for a company name and did not give any indication of any live business. The Wayback machine (“www.archive.org”) did, however, show historic use of the disputed domain name and some samples were viewed dating back to 2015, all of which referred to footwear. The September 23, 2015 capture, for example, referred among other things to “Havaianas Slim Cool Citrus Yellow. Havaianas with yellow sole and matching black straps. An essential summer style accessory made from our secret Brazilian rubber formula. Havaianas are made from premium quality Brazilian rubber”. The website also said, “be part of havaianas world”, and “Copyright Havaianas 2015”. Website captures dated November 2, 2016, March 29, 2018 and February 1, 2019 all offered footwear, featuring sandals, and were marked “Copyright Havaianas 2015”. According to the evidence, the Complainant’s trademark is widely recognised and advertised internationally. The Complainant has annexed a portfolio of modern, professional, colourful advertisements from publications in Australia (“Profile”, “OK”, and “Surf Business” magazines), El Salvador (“Ella”, “Almacenes Siman”), Mexico (“Familia Saudable”, “La Pasión de Ser Mujer”, “Cosmopolitan”, “El Universal”, “Tu”, “Publimetro”, “Vogue”, “Harper’s Bazar”, “Glamour”, “GQ”), New Zealand (“Remix”, “Kiaora”), and Thailand (“Esquire”, “Lips”, “Volume”, “Attitude”, “Cleo”, “HiSoParty”, “Tan Sloating”, “Garçon”, “Elle”, “Nylon”, and “JIBjib”). The Complainant has been advertised at airport or street hoardings in Colombia, the Dominican Republic, and Costa Rica; in shop displays Australia, Cambodia, and El Salvador; and at events in New Zealand and Mexico. Taking into account particularly the extent of the Complainant’s international self-promotion and the appearances of the Complainant’s trademark on the Respondent’s website, the Panel finds it to be not realistically conceivable that the Respondent has been unaware of the Complainant, its business and its trademark since at least as long ago as September 2015. The Respondent has not claimed any legitimate relationship with the Complainant such as being an authorised reseller, and has not claimed that product promoted through the disputed domain name has been authentically or exclusively the Complainant’s product. It may reasonably be concluded that the Respondent has incorporated the Complainant’s trademark into the disputed domain name with the addition of the word “Thailand” in order to imply that it represents an official agency for the Complainant’s products in Thailand. In the terms of paragraph 4(b)(iv) of the Policy, the Respondent is found to have registered and used the disputed domain name with intent to attract Internet users by confusion with the Complainant’s trademark for commercial gain. Accordingly, on the totality of the evidence and on the balance of probabilities, the Respondent is found to have registered and used the disputed 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 disputed domain name Dr. Clive N.A. Trotman
Sole Panelist
Date: November 17, 2020
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