The Complainants are Alpargatas S.A., Brazil (“First Complainant”) and Alpargatas Europe, SLU, Spain, (“Second Complainant”), represented by PADIMA, Abogados y Agentes de Propiedad Industrial, S.L., Spain.
The Respondents are Philipp Loewe, Germany / Mirza Bilkic, Germany / Klaudyna Maj, Germany / Leonie Barann, Germany / Michael Liddell, Germany / Frank Finkel, Germany / Valentina Martucci, Germany / Name Redacted, Germany / Name Redacted, Germany.1 2. The Domain Names and Registrars
The disputed domain names The disputed domain names Mat Bao Corporation and NETIM SARL are individually and collectively referred to below as the “Registrar”. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2021 regarding the five disputed domain names The Complainant filed an amended Complaint on May 14, 2021, adding the disputed domain names The Complainant filed an amended Complaint on May 25, 2021, adding the disputed domain names The Center verified that the Complaint together with the amended Complaints and the further amended 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 June 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2021. The Center received email communications on June 17, 2021 and June 21, 2021 from two individuals named as Respondents, claiming that their contact information had been used without their authorization for purposes of registering the respective disputed domain names. The Written Notice of the Complaint could not be delivered to four other individuals named as Respondents because their respective contact addresses were invalid. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 7, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on July 15, 2021. 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 Complainants are both part of the Alpargatas Group, which markets Havaianas flip-flops and other footwear. The First Complainant holds the following European Union Trade Mark registration numbers: - 003772431 for HAVAIANAS in a particular script, registered on September 20, 2005; - 007156128 for HAVAIANAS, registered on March 23, 2009; and - 008664096 for a figurative mark containing “havaianas”, registered on April 23, 2010. These trademark registrations all specify clothing, footwear, and headgear in class 25 and they remain current. The Second Complainant was recorded as the exclusive licensee of the above trademark registrations, among others, by the European Union Office for Harmonization in the Internal Market on January 12, 2011. The First Complainant has also registered the domain name The Respondents are named as nine different individuals. The Written Notice of the Complaint could not be delivered to four of them because their contact street addresses are invalid. Two other individuals named as Respondents claimed that their contact information had been used without their authorization for purposes of registering the respective disputed domain names. The disputed domain names were registered on the following dates and resolve to websites in the following languages: Disputed domain name Date of registration Language of associated website March 4, 2021 Portuguese March 8, 2021 Portuguese* March 8, 2021 English March 8, 2021 English March 12, 2021 Spanish* March 17, 2021 Danish* March 22, 2021 Polish March 23, 2021 Swedish March 29, 2021 Spanish* The disputed domain names all resolve or formerly resolved to similar websites offering for sale the Complainants’ HAVAIANAS brand flip-flops. All the websites prominently display the HAVAIANAS trademark as registered in a particular script, in red, as it appears on the Complainants’ website. The websites associated with The disputed domain names are confusingly similar to the Complainants’ HAVAIANAS trademark. The disputed domain names have been registered and are being used in bad faith. HAVAIANAS is a well-known trademark worldwide. Hence, the Respondents were aware of it and registered the disputed domain names with the intention to refer to the Complainants and their trademark. The disputed domain names are used in connection with commercial websites which contain the Complainants' branded items, trademarks and images without any disclaimer informing about the lack of relationship with the Complainant. The Complainants request that all the disputed domain names be cancelled. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issues A. Consolidation: Multiple Complainants The amended Complaint was filed by two Complainants. Both Complainants form part of the same corporate group. The First Complainant owns trademark registrations and has granted an exclusive license to use them in Europe. The Panel finds that they have a common grievance and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as the “Complainant” except as otherwise indicated. B. Consolidation: Multiple Domain Name Registrants The amended Complaint initiates disputes in relation to nominally different domain name registrants. The Complainant alleges that all the disputed domain names are under common control and ownership, and it requests consolidation of the disputes against the different domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s consolidation request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 and WIPO Overview 3.0, section 4.11.2. As regards common control, the Panel notes that the disputed domain names were all registered within a short period of time in March 2021. All the disputed domain names incorporate the HAVAIANAS trademark registered by the Complainant. All the websites associated with the disputed domain names display the Complainant’s HAVAIANAS trademark as registered in a particular script, in red, all offer for sale HAVAIANAS flip-flops, they have similar layouts and some display identical photographs. The contact addresses for all disputed domain names are in Germany; the administrative/billing/technical contact for at least seven disputed domain names is the same while those for the other two are not visible publicly. Although the disputed domain names are registered in the names of different individuals, two of the named individuals claim that their contact information was used without their authorization, the contact addresses of four others are invalid, and there is a discernible pattern in seven contact email addresses, i.e., ([name] [number]@yeah.net). It should be noted that the email user names are not those of the individuals named as disputed domain name registrants. In these circumstances, the Panel is persuaded that all nine disputed domain names are under common control. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. C. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainants are domiciled in Spain and the websites associated with the disputed domain names are in different languages. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint and the amended Complaints were filed in English. The Registration Agreements for eight disputed domain names are in English and the Panel has found in Section 6.1B above that all the disputed domain names are under common control. The one disputed domain name for which the Registration Agreement is in Vietnamese resolves to a website in Portuguese, not Vietnamese. Although the Center sent notification of the Complaint and an email regarding the language of the proceeding in both Vietnamese and English, the Respondent did not comment on the issue of language nor express any interest in otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint or the amended Complaint would create an undue burden and delay, whereas accepting it as filed without translation will not cause unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain names are 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 names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant holds rights in the HAVAIANAS mark. All the disputed domain names wholly incorporate the HAVAIANAS mark, in seven cases as their respective initial elements. All the disputed domain names also include an additional word (i.e., “outlet”, “sale”, “rea” (meaning “sale” in Swedish), “chancla” (meaning “flip flop” in Spanish), “klapki” (meaning “flip flops” in Polish) or “klipklapper” (meaning “flip flops” in Danish)), or in some cases a geographical term (i.e., “Brasil” (meaning “Brazil”), “España” (meaning “Spain”), “Portugal”, or “Singapore”, in two cases with a hyphen), or both,. These elements do not avoid a finding of confusing similarity between the disputed domain names and the Complainant’s HAVAIANAS trademark as the trademark is clearly recognizable within each disputed domain name. See WIPO Overview 3.0, section 1.7. The only other element in each disputed domain name is a generic Top-Level Domain (“gTLD”) suffix, in each case “.com”. As a technical requirement of registration, a gTLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The disputed domain names, which all incorporate the Complainant’s HAVAIANAS trademark, resolve or formerly resolved to websites that prominently display the Complainant’s HAVAIANAS trademark as registered in a particular script and offer for sale the Complainant’s flip-flops. The Complainant submits that it has not authorized the incorporation of its trademark in the disputed domain names. Regardless of whether the flip-flops offered for sale are genuine or counterfeit, the websites give the false impression that they are operated or endorsed by, or affiliated with, the Complainant. No disclaimer appears on the websites to clarify that the Respondent and its website have no relationship to the Complainant; in fact, the evidence does not show that the websites identify their operators at all. At the time of this decision, four disputed domain names are passively held. In these circumstances, the Panel does not consider either use to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is either use a legitimate noncommercial or fair use of the disputed domain names for the purposes of paragraph 4(c)(iii) of the Policy. The Respondent is identified in the Registrar’s WhoIs database as different individuals, none of whose name is a disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: (iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location. The disputed domain names were all registered in 2021, years after the registration of the Complainant’s HAVAIANAS trademark. All the disputed domain names wholly incorporate the HAVAIANAS trademark, in three cases combined with a word meaning “flip flops” which demonstrates an awareness of the Complainant’s products. Although “Havaianas” is a Portuguese word meaning “Hawaiians”, the disputed domain names resolve or formerly resolved to websites displaying the Complainant’s HAVAIANAS trademark as registered in a particular script, and the Complainant’s HAVAIANAS products, which also bear the Complainant’s trademark. Given these circumstances, the Panel finds that the Respondent knew of the Complainant and targeted its HAVAIANAS mark when it registered the disputed domain names. The Respondent uses or formerly used the disputed domain names, that wholly incorporate the Complainant’s HAVAIANAS trademark, to resolve to websites that offer flip-flops for sale and give the false impression that they are operated or endorsed by, or affiliated with, the Complainant. Given these circumstances and the findings in section 6.2B above, the Panel considers that the disputed domain names are intended to attract Internet users by creating a likelihood of confusion with the Complainant’s HAVAIANAS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a product on those websites within the terms of paragraph 4(b)(iv) of the Policy. The Panel notes that the use of four disputed domain names has recently changed, and that they no longer resolve to an active website. This change of use does not alter the Panel’s conclusion and may in fact constitute a further indication of bad faith. Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 names, Matthew Kennedy 1 The names and contact details of two Respondents appear to have been used without their consent when registering the disputed domain names
The Respondents have no rights or legitimate interests in respect of the disputed domain names. The disputed domain names contain the Complainants’ registered trademarks without authorization of the Complainants. The Complainant is not aware of any evidence demonstrating that the Respondents might be commonly known by the disputed domain names or an identical name.
Sole Panelist
Date: July 27, 2021
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