The Complainant is Vibram S.p.A. of Varese, Italy, represented by Avvocati Associati Feltrinelli & Brogi, Italy.
The Respondent is Xixi Nct of Shanghai, the People’s Republic of China.
The disputed domain name <5fingershoes-direct.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2010. On October 13, 2010, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn. a request for registrar verification in connection with the disputed domain name. On October 15, 2010, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. On October 15, 2010, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On October 18, 2010, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center has verified that the Complaint satisfies 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 proceeding commenced on October 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 11, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on November 12, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on November 19, 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 is a company incorporated in Italy and the owner of an international trade mark registration for the trade mark FIVEFINGERS (the “Trade Mark”).
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on May 3, 2010.
The Complainant made the following submissions in the Complaint.
The Complainant is the world leader in high performance rubber soles, targeted to the outdoor, work, recreation, fashion, repair and orthopaedic markets. Over the past 70 years, the Complainant has developed a range of high performance products suitable for, but not limited to, active sports. The Complainant operates in over 120 countries. Its headquarters are in Italy. The Complainant also has commercial and manufacturing locations in the United States, Brazil, Japan and has its own production centres in New York and Guangdong, China. The Complainant has spent a substantial amount of money developing, advertising and promoting its products throughout the world.
The Complainant has developed, among other products, “FiveFingers”, the only footwear offering the experience of going barefoot with the protection and sure-footed grip of a Vibram sole. FiveFingers footwear connects the foot to the earth in a way that is simply not possible in conventional shoes, because it stimulates the muscles in the feet, increasing the sense of balance, providing greater agility, and visibly improving posture.
The Trade Mark has gained and enjoys a substantial goodwill and a high reputation all around the world.
The disputed domain name is confusingly similar to the Trade Mark.
The website to which the disputed domain name is resolved (the “Website”) offers for sale unauthorised counterfeit products under the Trade Mark as well as other footwear products of third party brand owners unrelated to the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name and has registered and used the disputed domain name in bad faith to intentionally attract Internet users, for commercial gain, to the Website, by creating confusion with the Trade Mark.
The Respondent did not reply to the Complainant’s contentions.
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant has confirmed that no agreement has been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The disputed domain name is resolved to the Website, which is published entirely in English;
(2) The Respondent has therefore demonstrated it comprehends the English language.
The Respondent did not make any submissions with respect to the language of the proceeding, even though the Center’s communications to this effect were both in Chinese and English, and did not object to the use of English as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The disputed domain name comprises the wording “5finger” together with the generic words “shoes” and “direct”, separated by a hyphen. The Panel finds that the wording “5fingers” is the predominant part of the disputed domain name. Although the numeral “5” has been used by the Respondent in the disputed domain name, the Panel finds the disputed domain name is nonetheless phonetically identical to the Trade Mark and identical in meaning.
In the present case, the Panel concludes that the addition of a hyphen and the addition of the non-distinctive words “shoes” and “direct”, words frequently used in retailing and marketing of branded footwear, do not serve to distinguish the disputed domain name from the Trade Mark in any way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or names 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 organisation) have been commonly known by the domain name even if you have acquired no trade mark 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 trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant has asserted that the Website was used by the Respondent to market counterfeit footwear under the Trade Mark. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 Complainant has submitted compelling evidence to suggest that the disputed domain name is being used to offer for sale counterfeit products under the Trade Mark via the Website. This is strong evidence of bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
At some stage following the filing of the Complaint, the Respondent ceased using the disputed domain name. The Website is no longer active. It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski, WIPO Case No. D2008-0028). The Panel finds that, in the circumstances of this case, the passive use of the disputed domain name by the Respondent, having previously been used to facilitate the promotion and sale of counterfeit goods under the Trade mark prior to the filing of the Complaint, amounts to additional grounds for finding bad faith on the part of the Respondent.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <5fingershoes-direct.com> be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: December 1, 2010