The Complainant is Vibram S.p.A. of Albizzate Varese, Italy represented by Avvocati Associati Feltrinelli & Brogi, Italy.
The Respondent is Xin deyitian of Guangzhou, the People’s Republic of China.
The disputed domain names <5fingersshoes.org> and <officialfivefingers.org> (“Domain Names”) are 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 November 18, 2010. On November 19, 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 Domain Names. On November 23, 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 contact details. On November 23, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of the proceeding. On November 25, 2010, the Complainant submitted a 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 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 November 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2010.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on January 14, 2011. 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 Panel notes the Complainant’s request that English be the language of the proceeding, and further that the Respondent, although provided with copies of the Center’s case-related documents in both English and Chinese, has not elected to respond to either this request or to the Complaint. At the outset, the Panel will state that the submission that the language of the proceeding should be in English because the Complaint does not have knowledge of the Chinese language, is not per se persuasive in this case.
However, based on the evidence in the case file, the Panel has also noted that the Respondent’s website “www.officialfivefingers.org” shows only wordings in English language, and that there is not a single word in Chinese language that can be found in the whole website linked to the domain name. The Complainant has made the same inferences for the domain name <5fingersshoes.org>, which is not active at the moment. In view of this fact, 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 its decision in English.
4.1. The Complainant has asserted that it is the world leader in high performance rubber soles, targeted to the outdoor, work, recreation, fashion, repair and orthopedic markets. Vibram S.p.A. has over the past 70 years, developed a range of high performance products suitable for active sports and created the first rubber sole for mountain climbing in the 1930s. The Complainant claims to operate in over 120 Countries and is headquartered in Italy. Vibram S.p.A. has commercial and manufacturing locations in the United States of America, Brazil, Japan and has its own production centers in New York and Guang Dong, China. Vibram S.p.A. developed the “FiveFingers” product which is the only footwear offering the experience of going barefoot with the protection and sure-footed grip of a Vibram sole. Through its official web site “www.vibramfivefingers.com”, FiveFingers footwear is said to be superior to conventional shoes because they stimulate the muscles in the feet and increases sense of balance, greater agility, and visibly improving posture. Simple research or Internet searches conducted among the major Internet search engines (like Google, Yahoo, Altavista and Lycos) have show that the term “fivefingers” is referred to the Complainant’s products.
4.2. The Complainant has annexed to its Complaint a list of applications and registrations of its trademarks, which include the following (all of which appear to be simple word marks):
- International trademark registration n. 337824 VIBRAM, registered on June 23, 1967 and duly renewed, in classes 17 and 25.
- International trademark registration n. 915254 VIBRAM and device, registered on January 30, 2007 in classes 12, 26 and 28.
- China trademark registration n. 246873 VIBRAM, registered on March 30, 1986, in class 54 and duly renewed.
- International trademark registration n. 978630 FIVEFINGERS and device, registered on June 20, 2008, in class 25.
- International trademark registration n. 917017 FIVEFINGERS VIBRAM and device, registered on January 18, 2007, in class 25.
4.3. Vibram S.p.A. claimed to have been recently informed about the registration of the Domain Names <officialfivefingers.org> and <5fingersshoes.org>, created respectively on May 14, 2010 and on May 19, 2010, in the name of “Xin deyitian”.
4.4. The Complainant has provided evidence that the domain name <officialfivefingers.org> is linked to a website which has nothing to do with the Complainant, in which FiveFingers-like shoes are offered for sale. The Complainant has also made similar submissions in regards to the domain name <5fingersshoes.org>. Both websites now link to a default website page.
5.1 The Complainant contends that the Domain Names are identical or confusingly similar to a trademark in which it holds rights for the following reasons:
(i) the domain name <5fingersshoes.org”> incorporates the character combination “5fingers” which corresponds to the Complainant’s trademark FIVEFINGERS: “5fingers” and FIVEFINGERS are phonetically identical and confusingly similar words. The only real difference between <5fingershoes.org>, <officialfivefingers.org> and the Complainant’s trademark, is represented by the words “shoes” and “official”.
While the Complainant’s trademarks relate to shoes, the Respondent’s website “www.officialfivefingers.org”, linked to the Domain Names <officialfivefingers.org> and <5fingershoes.org> offers shoes for sale.
(ii) The Complainant asserts that the words “shoes” and “official” are clearly non-distinctive and fail to prevent the disputed domain names from being confusingly similar to the Complainant’s trademark FIVEFINGERS. In addition, the term “official” simply evokes the idea that the website linked to the domain name <officialfivefingers.org> is “directly” connected to the Complainant.
(iii) The Complainant submits that the addition of such terms to the trademark FIVEFINGERS represents a negligible difference between the trademark and the Domain Names, and it is not enough to change the impression of the Domain Names being confusingly similar to the Complainant’s trademark. The Complainant submits that the use of the words “shoes” and “official” increases the risk of confusion for the consumers, which may be led to believe that the websites linked to the Domain Names represent Company Internet Stores that have a connection with the Complainant.
(iv) The Complainant asserts that by simply substituting the word “five” with the corresponding number “5”, in the domain name <5fingershoes.org>, the Respondent has engaging in “typosquatting”. This is asserted to be a practice that consists in the registration of a domain name which is a slight alphabetical variation of a famous trademark. The Complainant cites several previous UDRP decisions as examples of confusing similarity brought about through easily made typing errors by an Internet user. See, e.g., DaimlerChrysler Corporation v. Worshiping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272.
(v) The Complainant has further argued that the addition of the gTLD “.org” to the Domain Names does not avoid confusing similarity. The Complainant submits that the gTLD “.org” is without legal significance since the use of a gTLD is technically required to operate the domain name and cites decisions such as 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.
5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Names for the following reasons:
(i) The Domain Names do not correspond to the Respondent’s name “Xin deyitian”. Further, “Xin deyitian” is not commonly known as “officialfivefingers.org” or “5fingersshoes.org”.
(ii) The Complainant has not granted any license to the Respondent nor has it ever authorised the Respondent to use the Domain Names or the trademark FIVEFINGERS. The Respondent is not a licensee or a dealer, agent or distributor of Vibram products and there is in fact no relationship between the Complainant and the Respondent
(iii) The Complainant makes the point that previous UDRP decisions have held that the Respondent has, at the minimum to be: (a) actually be offering the goods or services at issue; (b) using the site to sell only the trademarked goods; (c) accurately disclosing the Registrant’s relationship with the trademark owner; (d) Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. The Complainant cited the decision of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
(iv) Finally, the Complainant claims that it could not find any fair or noncommercial uses of the Domain Names.
5.3 The Complainant, lastly, contends that the Domain Names were registered and are being used in bad faith for the following reasons:
(i) By using the Domain Names, the Respondent intentionally attempted 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.
(ii) The Respondent had deliberately chosen the two names of the disputed websites purely to give an impression of association with the Complainant and its products. The Respondent had clearly adopted the Complainant’s trademark FIVEFINGERS for his own use, incorporating it into the Domain Names by creating a likelihood of confusion with the Complainant’s trademark and its official websites.
(iii) That the Complainant’s trademark is distinctive, and the fact that the Respondent has registered two Domain Names that are almost identical to it indicates that the Respondent obviously had knowledge of the Complainant’s trademark at the time of registration of the Domain Names. It is submitted that the Respondent’s awareness of the Complainant is based on the high reputation in the world of the VIBRAM trademarks and the Respondent “knew or should have known” of the registration and use of the trademark FIVEFINGERS prior to registering the Domain Names. The Complainant asserts that this constitutes bad faith and that the fact that the Respondent must be taken to have known of the Complainant’s trademark before he registered the Domain Names, because his websites addresses Internet users on the assumption that they already knew of these trademarks and of the products offered by the Complainant (citing America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004).
(iv) The Respondent had intentionally attempted to attract Internet users for commercial gain as the use the Respondent made in the Domain Names for identical goods to the ones that are sold by the Complainant. The Respondent’s use of the Complainant’s trademark to promote goods that are regularly sold by the Complainant is clear evidence that the Respondent registered the Domain Names with knowledge of the Complainant’s trademarks and it intended to trade off the value of these.
(v) The current use of the Domain Names allows the access to a website which is not affiliated with the Complainant and is bad faith as it causes great damages to the Complaniant, due to the misleading of the present clients and the loss of the potential new ones (citing Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500).
The Complainant requests the Panel to order that the Domain Names be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6.1. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The Panel finds that the Respondent has appropriately received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has employed reasonably available means to notify the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.2 The Panel has reviewed the Complaint together with its annexes and, in light of this material, the Panel finds as set out below.
6.3 This Panel does not find any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel deciding the dispute based upon the Complaint.
6.4 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, the Complainant must prove that:
(i) the 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 Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
6.5 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to submit a response, a panel may draw negative inferences from that respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
6.6 Where the respondent chooses not to present any such evidence to dispute the claims of the complainant, an inference may be made that such evidence would not have been favorable to the respondent, or that he accepts the factual claims of the complainant, or even that he does not wish to respond or defend his perceived interest in the disputed domain name. (See Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc. /Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808).
6.7 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.8 In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark right; and the Domain Names are identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.9 The Complainant has provided proof as to its registered trademark rights in FIVEFINGERS. Given this, the Panel has little difficulty in concluding that the Domain Names are confusingly similar to a trademark in which the Complainant has rights. The Panel agrees with the Complainant that the addition of the generic terms “official” and “shoes” and the gTLD “.org” simply increase the confusion because these generic terms imply a direct connection to the Complainant’s trademark FIVEFINGERS and do have an impact on the similarity.
6.10 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
6.11 At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the name of the Complainant with a view to attracting Internet users to its website, where it offers the same or similar services as those offered by the Complainant. The Panel accepts here that such activity does not provide the Respondent with a legitimate interest in the Domain Names.
6.12 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the Domain Names.
6.13 Paragraph 4(c) of the Policy provides examples of circumstances that shall demonstrate rights or legitimate interests to a disputed domain name for purposes of paragraph 4(a)(ii). However, it is the prevailing consensus view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent is deemed to inter alia have no rights or legitimate interests in the domain name.
6.14 As previously held by other WIPO UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [c]omplainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001)
6.15 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Names. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the Domain Names, or that the Respondent has made noncommercial or fair use of the Domain Names. The Respondent has also not used the Domain Names in connection with a bona fide offering of goods or services but instead has assertedly sold unauthorised or counterfeit products of the Complainant to which no rebuttal has been made. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Names which are confusingly similar to the Complainant’s mark which showing has remained unrebutted.
6.16 Under the current record, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Names and that the requirement of paragraph 4(a)(ii) is also satisfied.
6.17 The Panel accepts the Complainant’s contention that the Respondent registered the Domain Names in the knowledge of the Complainant’s business and its use of the trademark FIVEFINGERS. This is inherently probable in view of the fact that the Respondent only registered the Domain Names in May 2010 after the Complainant had had many years of registration and use of FIVEFINGERS trademark, and in view of the subsequent use of the Domain Names.
6.18 Given this finding, the Panel also infers and accepts the Complainant’s undisputed contention that the Respondent registered both Domain Names with a view to diverting Internet users with an interest in FiveFingers shoes to its website for its own commercial gain.
6.19 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.
6.20 Given inter alia that the Respondent has failed to show (for the reasons set out under the heading of legitimate interests above) that it was using the Domain Names exclusively to deal in genuine FiveFingers products and has also failed to disclose on the site any relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain users to its website by creating a likelihood of confusion with the Complainant’s mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.21 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. Considering the Complainant has established all three elements of the Policy, the Panel finds in favour of the Complainant.
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 Names <5fingersshoes.org> and <officialfivefingers.org>, be transferred to the Complainant.
Dr. Colin Yee Cheng Ong
Sole Panelist
Dated: January 30, 2011