The Complainant is Alpargatas S.A, Brazil, and Alpargatas Europe, S.L.U, Spain, represented by PADIMA, Abogados y Agentes de Propiedad Industrial, S.L., Spain.
The Respondents are Domain Admin, Whoisprotection.cc, Malaysia, Client Care, Web Commerce Communications Limited, Malaysia, and Contact Privacy Inc. Customer 0161902546, Canada / Anne-Laure Linval, Thehavaianasstore, France.
2. The Domain Names and RegistrarsThe disputed domain names
The disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021. On July 22, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On July 22 and July 23, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 4, 2021.
The Center verified that the Complaint together with the 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 August 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on October 12, 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 BackgroundThe Complainant Alpargatas S.A is a company registered in Brazil and is a supplier of footwear including flip-flop sandals under the name and trademark HAVAIANAS. The Complainant Alpargatas Europe, S.L.U is the exclusive licensee of the trademark HAVAIANAS in Europe.
The Complainant holds a large portfolio of HAVAIANAS trademarks such as the following the European Union Trade Mark registration number 007156128 for the word HAVAIANAS, filed on August 11, 2008, registered on March 23, 2009, and covering goods in International Class 25.
The disputed domain names were registered as follows:
-
-
-
At the time of filing the Complaint, the disputed domain names
The webpage corresponding to the disputed domain name
The disputed domain names
The Complainant contends that the disputed domain names are confusingly similar to its well-known trademark HAVAIANAS, the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith. The Complainant requests the cancellation of the disputed domain names.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, the Complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Preliminary Procedural Issue. Consolidation of Multiple Disputed Domain Names and RespondentsAccording to the provisions of paragraph 10(e) of the Rules, the Panel has the power to decide the consolidation of multiple domain names disputes. Further, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
According to the Registrars’ verifications, the registrants for the disputed domain names are the following:
Domain Admin, Whoisprotection.cc for the disputed domain names
In the present case, there are eight disputed domain names, and three sets of registrant details.
The present disputed domain names: (i) were created in a similar manner: the trademark HAVAIANAS together with generic terms related to the Complainant’s business; (ii) some of the disputed domain names were registered under the same name and/or the same Registrar – only the disputed domain name
The Respondent had the opportunity to comment on the consolidation request made by the Complainant but it chose to remain silent.
From the above, the Panel finds that the disputed domain names are subject to common control and it would be equitable and procedurally efficient to decide the consolidation of multiple disputed domain names and the Respondents in the present procedure. See also section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
B. Identical or Confusingly SimilarThe Panel finds that the Complainant holds rights in the HAVAIANAS trademark.
The disputed domain names incorporate the Complainant’s HAVAIANAS trademark with additional terms, “chanclas”, “mexico”, “australia”, “ie sale”, “outlet schweiz”, “sliders uk”, “terlik”, “uk sale”, and “the store”.
However, such additions do not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain names.
Numerous UDRP panels have considered that the addition of other terms (whether geographical wording, descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark HAVAIANAS, pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate InterestsThe Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark HAVAIANAS, that the Respondent is not commonly known by the disputed domain names, and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain names.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain names, or has been known by these disputed domain names, or is making any legitimate noncommercial or fair use of the disputed domain names. In fact, at the time of filing the Complaint some of the disputed domain names resolved to commercial websites featuring the HAVAIANAS trademark and offering for sale unauthorized products bearing the Complainant’s trademark without the Complainant’s consent.
In this case, assuming that the products or at least some of the products offered for sale under the disputed domain names were genuine HAVAIANAS branded products, the key question under this element is whether the Respondent’s use of the disputed domain names for such resale amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy. Relevant UDRP panel decisions in relation to this issue are helpfully summarized in section 2.8 of the WIPO Overview 3.0 as follows:
A reseller, distributor, or service provider can be making a bona fide offering of goods and services and, thus, have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder, and the respondent must not try to “corner the market” in domain names that reflect the trademark.
This summary is based on UDRP panel decisions such as Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. At least one condition that is outlined has clearly not been satisfied by the Respondent in this case: at the time of filing the Complaint, on the websites under the disputed domain names there was no accurate information regarding the Respondent’s rights and its relationship with the Complainant. Further, images of the Complainant’s trademarks and official products were displayed without any approval and the websites falsely claim copyright protection for the website content, thus generating a likelihood of confusion for Internet users accessing the Respondent’s websites.
As the Complainant’s products under the HAVAIANAS marks are primarily distributed through official/endorsed stores, Internet users are misled regarding the relationship between the websites corresponding to the disputed domain names and the Complainant, and will falsely believe that the websites under the disputed domain names belong to an official, endorsed distributor of the Complainant.
In addition, and without prejudice to the above, the nature of the disputed domain names, comprising the Complainant’s well-known trademark in its entirety with geographical or descriptive terms, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).
D. Registered and Used in Bad FaithThe Complainant holds registered trademark rights for HAVAIANAS since at least 2004 and has established a reputation worldwide.
Previous UDRP panels have found that the Complainant’s HAVAIANAS trademark is well-known and widely recognized internationally. See, for example, Alpargatas S.A, Alpargatas Europe, SLU v. Claudia Wirtz, Domain Admin, Whoisprotection.cc, Domain Administrator, See PrivacyGuardian.org / Sven Kaestner, and Client Care, Web Commerce Communications Limited,WIPO Case No. D2021-1821; Alpargatas S.A. v. Wanasa Theepangkorn, Bare Feet Co., Ltd.,WIPO Case No. D2020-2413; and Alpargatas S.A. v. Whois agent (869611973), Whois Privacy Protection Service, Inc. / Alan Vitor, Leite Santos,WIPO Case No. D2020-1325.
The disputed domain names were created in 2021 and incorporate the Complainant’s mark with additional non-distinctive terms closely related to the Complainant’s business, such as “chanclas” (“flip flops” in Spanish), “sale”, “outlet”, “sliders”, “store”, “terlik” (“slipper” in Turkish), or geographical indicators, such as “mexico”, “australia”, “schweiz”, “uk”.
For the above reasons, the Panel finds that the disputed domain names were registered in bad faith, with knowledge of the Complainant, its business and particularly targeting the Complainant’s trademark.
Further, the Respondent is using without permission the Complainant’s distinctive trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential connection with the Complainant. This impression is created particularly by the incorporation of the Complainant’s distinctive trademark in the disputed domain names, the content on the websites provided thereunder which includes the Complainant’s trademark, official product images, and the notice claiming copyright protection for the material presented on such websites.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
Given that the disputed domain names
Further, the disputed domain names
The Complainant’s trademark is well-known and used worldwide, the Respondent did not submit a response and there is no plausible reason for the Respondent to choose and register the disputed domain names other than to create confusion or association with the Complainant and its HAVAIANAS mark.
Moreover, the Respondent registered the disputed domain names under a privacy service and did not participate in the present proceedings in order to put forward any arguments in its favor, which further suggests the Respondent’s bad faith.
Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark may constitute, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
7. DecisionFor 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,
Marilena Comanescu
Sole Panelist
Date: October 19, 2021