The Complainant is Vibram S.p.A. of Italy, represented by Avvocati Associati Feltrinelli & Brogi of Italy.
The Respondent is Peng Zhen of the People’s Republic of China.
The disputed domain name <shopvibramfivefingers.com> (“Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2010. On June 10, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Name. On June 11, 2010, HiChina Zhicheng Technology Ltd. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 16, 2010. 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.
The Complainant has been in the business of high performance rubber soles for the outdoor, work, recreation, fashion, repair and orthopaedic markets for the last 70 years. The Complainant is headquartered in Italy and operates in over 120 countries. The Complainant also has production centres in New York, United States of America and Guangdong, the People’s Republic of China.
The word “Vibram” is a key part of the Complainant’s name. One of the Complainant’s range of products is marketed under the trade mark FIVEFINGERS. Searches on major Internet search engines (e.g. Google, Yahoo) produce hits that associate “FiveFingers” with the Complainant.
The Complainant owns trade mark registrations for the words “vibram” and “fivefingers” including the following WIPO registrations which cover the People’s Republic of China:
Trademark No Mark Registration date
915254 VIBRAM & device January 30, 2007
917017 FIVEFINGERS VIBRAM & device January 18, 2007
978630 FIVEFINGERS June 20, 2008
The Complainant also operates websites at the domain names <vibram.com> and <vibramfivefingers.com> at which the Complainant market goods under the trade marks VIBRAM and FIVEFINGERS. When the Panel visited the Complainant’s website at “www.vibramfivefingers.com” to verify the Complainant’s information, it was noted that a user is offered a selection of different parts of the world which would direct the user to another website at “www.vibramfivefingers.cn” if China is selected. Among the Complainant’s products are footwear moulded into the shape of feet with distinct toes.
The Disputed Domain Name was registered on April 23, 2010, about 3 years after the Complainant’s trade mark registrations above. The Disputed Domain Name resolves to a website at “www.shopvibramfivefingers.com” which purports to offer “Vibram Fivefingers” footwear moulded into the shape of feet with distinct toes for sale via an online shopping cart facility. The trade marks VIBRAM and FIVEGINGERS are used throughout the website. No other information about the Respondent is available beyond the WhoIs information for the Disputed Domain Name and the website resolved therefrom.
The Complainant contends that:
1) The Disputed Domain Name is confusingly similar to the Complainant’s trade marks;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Disputed Domain Name does not correspond to the Respondent’s name and the Respondent’s name is not commonly known as the Disputed Domain Name. The Complainant has never licensed, authorised or otherwise permitted the Respondent to register and use the Disputed Domain Name or the trade marks VIBRAM and FIVEFINGERS. There is no relationship between the Complainant and the Respondent.
3) The Disputed Domain Name was registered and is being used in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks and official website at “www.vibramfivefingers.com” as to source, sponsorship, affiliation or endorsement. The Respondent must have known of the Complainant’s trade marks before he registered the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
The default language of the proceeding should be Chinese because the registration agreement is in Chinese. However, pursuant to paragraph 11(a) of the Rules, the Panel hereby determines that English shall be the language of the proceeding having regard to fairness to the parties and procedural cost-efficiency and expedition for the following reasons:
(1) The Complainant has requested that English be the language of the proceeding;
(2) The Respondent’s website under the Disputed Domain Name is exclusively in fluent English. No Chinese is used at the website. The website demonstrated that the Respondent is competent in English;
(3) The Complaint is submitted in English. It would be time-consuming and cost-intensive to require the Complainant to provide a Chinese translation of the Complaint;
(4) The Respondent did not contest the language of the proceeding although he was given an opportunity to comment on the Complainant’s request that English be the language of the proceeding;
(5) All of the Center’s communications have been transmitted to the Parties in English and Chinese; and
(6) It serves no discernible purpose or benefit to adhere to the default language of the Registration Agreement in this case.
Paragraph 4(a) of the Policy requires the following to be established in order for the Complainant to succeed in this proceeding:
(1) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant’s trade mark registrations for VIBRAM and FIVEFINGERS establish the Complainant’s trade mark rights for purposes of this proceeding. It should be noted that the Complainant uses the concatenation VIBRAMFIVEFINGERS on its website and as a domain name. The Panel is satisfied that manner in which the Complainant uses the concatenation indicates that the Complainant adopts it as a trade mark. By virtue of the trade mark registrations for VIBRAM and FIVEFINGERS, the Panel is also satisfied that the Complainant has rights in the trade mark VIBRAMFIVEFINGERS.
Therefore, the Disputed Domain Name incorporates the entirety of the Complainant’s trade marks VIBRAM and FIVEFINGERS, or alternatively, the combination trade mark VIBRAM FIVEFINGERS. The only difference between the Disputed Domain Name and the Complainant’s trade marks VIBRAM and FIVEFINGERS, is the prefix “shop”. The word “shop” obviously designates a call to visitors to the Respondent’s website to buy products under the trade marks VIBRAM and FIVEFINGERS.
The principle that a domain name incorporating a trade mark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is confusingly similar to the trade mark has been repeated many times by many panels (e.g., Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144). The Panel is of the view that the prefix “shop” in the Disputed Domain Name is non-distinctive. Therefore, the Disputed Domain Name is confusingly similar to the Complainant’s trade mark VIBRAM and FIVEFINGERS (or alternatively, the combination of the trade mark VIBRAM and the trade mark FIVEFINGERS). The first limb of paragraph 4(a) is accordingly satisfied.
Previous UDRP panels have developed a consensus that a complainant is only required to show a prima facie case that a respondent does not have rights or legitimate interests in a disputed domain name to shift the burden of producing evidence sufficient to rebutt such case to the respondent.
The Complainant, being the owner of rights in the trade marks VIBRAM and FIVEFINGERS (and the combination VIBRAM FIVEFINGERS), has confirmed that it did not grant the Respondent any rights to register or use the Disputed Domain Name. It is noted that the Respondent is offering for sale goods under the Complainant’s VIBRAM and FIVEFINGERS trademarks (it remains unclear on the record whether these are original as alleged by the Complainant. In any event,the right to resell products under a trademark does not amount to any authorization to use the trademark as the basis for a domain name (see Vibram S.p.A. v. Chen yanbing, WIPO Case No. D2010-0981).
The Panel takes judicial notice that footwear is not normally moulded with distinct toes. The Complainant has adopted an unusual footwear design and the trade marks VIBRAM and FIVEFINGERS. The adoption of the trade marks VIBRAM and FIVEFINGERS on the Respondent’s website in association with footwear that are moulded with distinct toes is simply too odd to be regarded as mere coincidence. The Respondent is also not commonly known by the Disputed Domain Name. These facts strongly suggest that the Respondent is well aware of the Complainant and the Complainant’s trade marks. The Respondent must have consciously and deliberately adopted the Complainant’s trade marks.
In the circumstances, the Panel concludes that a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name is established. Since no Response was filed, the second element of the Policy is established.
Based on the evidence submitted by the Complainant, including the search engine results provided with the Complaint, this Panel accepts that the trade mark VIBRAM FIVEFINGERS is prima facie well-known. The prima facie finding remains in view of the absence of a Response.
The Panel has already found above that the Respondent must have had prior knowledge of the Complainant’s trade mark rights. The selection of the Disputed Domain Name by the Respondent together with the adoption of the Complainant’s trade marks VIBRAM and FIVEFINGERS on the Respondent’s website clearly exhibits a deliberate intent to associate with the Complainant’s trade marks. The use of the Disputed Domain Name in such a manner indicates opportunistic bad faith registration and use. Such use takes unfair advantage of the reputation in the Complainant’s trade marks (Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, supra; Privatbrauerei Eichbaum GmbH & Co, KG v. Hamit Karaca, WIPO Case No. D2010-0258: Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219).
In addition to the above, the Disputed Domain Name is clearly being used by the Respondent to attract Internet users, by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of products on the website. Further, the Respondent’s website offers to sell products using a shopping cart facility which can only be targeted at commercial gain. Such activity falls within the mischief targeted at by paragraph 4(b)(iv) of the Policy.
In the circumstances, the Panel holds that the third limb of paragraph 4(a) is hereby established.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <shopvibramfivefingers.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: July 30, 2010