WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vibram S.p.A. v. Chen yanbing

Case No. D2010-0981

1. The Parties

The Complainant is Vibram S.p.A. of Varese, Italy, represented by Avvocati Associati Feltrinelli & Brogi, Italy.

The Respondent is Chen yanbing of Beijing, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <discountvibramfivefingers.com> is registered with HiChina Zhicheng Technology Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2010. On the same day, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On June 17, 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. On June 18, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. 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 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2010.

The Center appointed Jonathan Agmon as the sole panelist in this matter on July 21, 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.

4. Factual Background

Vibram S.p.A. (the “Complainant”) is an Italian based company that engages in the field of footwear for over 70 years. The Complainant’s products mainly consist of high performance rubber soles and “fivefingers” shoes. The “fivefingers” shoes are footwear products that offer the experience of going barefoot while enjoying the protection and sure footed grip of the Complainant’s soles.

The Complainant manufactures and sells its products in multiple countries around the world.

The Complainant owns multiple trademark registration for the trademarks VIBRAM and FIVEFINGERS in various countries around the world. For example: Chinese trademark registration No. 257005 – VIBRAM, with the registration date of 1986; International trademark registration No. 917017 – FIVEFINGERS VIBRAM and device, with the registration date of 2007; International trademark registration No. 978630 – FIVEFINGERS, with the registration date of 2005; and others.

The Complainant has also developed a presence on the Internet and is the owner of several domain names, which contain the words “vibram” and/or “fivefingers”. For example: <vibram.com>, <vibramfivefingers.com> and <vibramfivefingers.it>. The Complainant is using these domain names in connection with its activities.

The disputed domain name was registered by the Respondent on April 15, 2010.

The disputed domain name resolves to an on-line marketplace, which offers for sale footwear products that appear the carry the VIBRAM and FIVEFINGERS marks.

5. Parties’ Contentions

A. Complainant

The Complainant raises the following contentions:

1. The Complainant established significant goodwill and high reputation in the VIBRAM and FIVEFINGERS marks, which are widely associated with the Complainant.

2. The disputed domain name fully incorporates the VIBRAM, FIVEFINGERS and FIVEFINGERS VIBRAM trademarks (hereinafter: Complainant’s trademarks).

3. The addition of the generic term “discount” to the disputed domain name does not reduce the risk of consumer confusion.

4. The Respondent has no rights or legitimate interest in the disputed domain name, since the Respondent does not own a relevant trademark registration and is not commonly known as “discountvibramfivefingers.com”.

5. Despite the fact that the products on the disputed domain name seem to be original products by the Complainant, the Complainant had not licensed or authorized the Respondent to use the disputed domain name or the Complainant’s trademarks.

6. The Respondent’s actions led to consumer confusion as to the source of origin of the disputed domain name by creating a likelihood of confusion with Complainant’s trademark and its “www.vibramfivefingers.com” website.

7. The Respondent’s use of the Complainant’s trademarks and images from the Complainant’s “www.vibramfivefingers.com” website evidence the Respondent’s bad faith.

8. The fact that the Respondent registered a domain that is almost identical to the Complainant’s distinctive trademarks proves that the Respondent knew of the Complainant’s trademarks upon registering the disputed domain name.

9. The Respondent is taking advantage of the Complainant’s marks goodwill in order to attract Internet users, without the Complainant’s authorization. The Complainant argues that for this reason, the Respondent cannot be considered as making a bone fide use of the disputed domain name.

For all of the above reasons, 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

A. Language of the proceeding

On June 18, 2010, the Complainant submitted a request to the Center that English be the language of proceeding. The Respondent did not comment on the language of proceeding by the specified due date. Based on the evidence in the case file, the Panel notes that the language of the website operating under the disputed domain name is English. In view of this and in view of the fact that the Respondent, although provided with copies of the Center’s case-related documents in both English and Chinese, has not objected to English being the language of the proceeding, it is not foreseeable that the Respondent will be prejudiced if English is adopted as the language of the proceeding. Consequently, the Panel will render the decision in English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the marks VIBRAM and FIVEFINGERS. For example: Chinese trademark registration No. 257005 – VIBRAM, with the registration date of 1986; International trademark registration No. 917017 – FIVEFINGERS VIBRAM and device, with the registration date of 2007; International trademark registration No. 978630– FIVEFINGERS, with the registration date of 2005; and others.

The Panel notes that the disputed domain name <discountvibramfivefingers.com> differs from the registered FIVEFINGERS VIBRAM trademark only by the additional word “discount” and the additional gTLD “.com”.

The additional word “discount” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s VIBRAM, FIVEFINGERS and FIVEFINGERS VIBRAM trademarks, especially as the word “discount” is a descriptive term that concerns price cut. Such descriptive term that is commonly used in the open market cannot suffice to avoid confusion between the domain name and the trademark.

Previous WIPO UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.., WIPO Case No. D2006-0909).

Indeed, “The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

Furthermore, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

The result is that the Complainant has shown that the above disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to adduce evidence in rebuttal showing that it has rights or legitimate interests in respect to the disputed domain name.

In the present case, Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Panel finds that Complainant has established such a prima facie case inter alia due to the fact that Complainant did not license or otherwise had permitted the Respondent to use the VIBRAM, FIVEFINGERS or FIVEFINGERS VIBRAM trademarks, or a variation thereof. The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that are sufficient to rebut the Complainant’s prima facie case.

The Panel notes the goods sold (or resold) on the website that operates under the disputed domain name is (according to the Complainant) the Complainant’s genuine branded goods (in the sense that they are not counterfeits). This potentially indicates that the Respondent may have rights or legitimate interests in the Complainant’s trademarks, provided that the Respondent is able to prove that he is a reseller or distributer of the Complainant’s trademarked products only, and that he meets certain other requirements such as adequately disclosing his relationship with the trademark owner (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; see also paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, in which the Oki Data case is cited as representative of the majority view of WIPO panelists. The WIPO Overview also notes a minority view in which panels have found that, without the express permission of the trademark holder the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name. See also more recently X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207). This Panel is more inclined towards what is described as the minority view, but in any event finds that in this case, the Respondent did not meet the relevant burden of proof under either approach. The Respondent did not allege that he is a licensee, reseller or distributer of the Complainant's goods and did not file any evidence that indicates a relationship of any sort between the parties. There is no evidence of the Complainant having authorized the Respondent to sell its branded goods, let alone through a domain name which fully incorporates and is confusingly similar to the Complainant’s trademark. There is no evidence of the Complainant having given its permission for the (rather prominent) use of its trademark on the website at the disputed domain name. Even if there were, the website at the disputed domain name does not appear to describe the relationship (or lack thereof) with the trademark owner. This, along with the fact that the Complainant has indicated that it is not connected to the Respondent, convinced the Panel that the Respondent is a non-licensed distributer of the Complainant’s goods, that it has obtained no permission to the use the Complainant’s trademark in the domain name, and that even if it had it would still fail to meet all of the requisite criteria set out in the Oki Data case, and therefore has no rights or legitimate interest in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii)).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search preformed by the Panel, the Complainant owns registrations for the VIBRAM trademark since the year 1986 and registrations for the FIVEFINGERS trademark since 2005. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the Respondent, if by using the domain name he had intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.

The disputed domain name currently leads Internet users to a website that promotes the sale of footwear products, namely fivefingers shoes that carry the Complainant’s trademarks.

Furthermore, the disputed domain name contains images that are similar to the images shown in the Complainant’s “www.vibramfivefingers.com” website.

The Respondent’s use of the Complainant’s trademarks to promote goods that are regularly sold by the Complainant is clear evidence that the Respondent registered the disputed domain name with knowledge of the Complainant’s VIBRAM, FIVEFINGERS and FIVEFINGERS VIBRAM trademarks and of the Complainant’s commercial use of them, and subsequent intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the use the Respondent made in the disputed domain name for identical goods to the ones that are sold by the Complainant, constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450).

In addition, previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainants’ site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Panel also finds that the Respondent’s use of images that are identical to the images that appear in the Complainant’s website, along with Complainant’s trademarks, prove that the Respondent attempted to create a false impression of association between the disputed domain name and Complainant’s “www,vibramfivefingers.com” website. This constitutes bad faith (Villeroy & Boch AG v. Nikolay A. Lezhnin, WIPO Case No. D2009-1036)

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademarks in the disputed domain name and the false impression of association created by the Respondent in the disputed domain name, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

For all 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 <discountvibramfivefingers.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: August 3, 2010