The Complainant is FitFlop Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Fross Zelnick Lehrman & Zissu, PC of United States of America.
The Respondent is FreeMaxMedia of Berkshire, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <fitflop-shoes.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2011. On March 16, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 16, 2011, Tucows Inc. 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 March 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2011.
The Center appointed Jon Lang as the sole panelist in this matter on April 18, 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 Complainant manufactures and sells FitFlop footwear which is “biomechanically engineered to help tone and tighten your leg muscles while you walk in them.” The Complainant has manufactured footwear sold under the FITFLOP and FITFLOPS marks since 2007. FITFLOP branded footwear (including that branded FITFLOPS) is sold in more than fifty countries under the FITFLOP mark and has been available in the United Kingdom since 2007. The Complainant owns several trade mark registrations for the FITFLOP mark around the world, for instance, United Kingdom trade mark No. 2407826 (registration date of August 4, 2006). The Complainant offers several styles of footwear with each product prominently bearing the FITFLOP mark. Moreover, all FITFLOP product packaging features the FITFLOP mark. The Complainant sells its FITFLOP branded products exclusively through authorised retailers or through its online FITFLOP store at “www.fitflop.com”. Its website was first launched in May 2007 and transactional e-commerce was added to the site in August 2010. The Complainant’s website averages nearly 200,000 thousand visitors per year from around the world.
The disputed domain name <fitflop-shoes.com>, hereafter the Domain Name, was registered by the Respondent on July 30, 2009. By this time the Complainant had been using its Fitflop trade mark for sometime.
There has never been any relationship between the Complainant and the Respondent that would give rise to any license, permission or authorisation for the Respondent to use or register the Domain Name, and the Respondent is not and has never been an authorised seller of any FITFLOP products.
The website to which the Domain Name points contains elements that mimic the design and layout of the Complainant’s official website. In particular, the website to which the Domain Name points incorporates images copied directly from the Complainant’s official website.
The Respondent uses the FITFLOP mark in its Domain Name for what appears to be a blog that features news and reviews of various FITFLOP products. The Respondent uses or has used the FITFLOP mark on each page of its website as well as using the Complainant’s own product shots. The effect is to falsely suggest an affiliation with the Complainant or to falsely suggest that the Respondent has a relationship with Complainant that allows the Respondent to offer genuine Fitflop products for sale.
There is no disclaimer on the Respondent’s website that would indicate to consumers that it is not affiliated with the Complainant, or that it is using the Complainant’s FITFLOP trade marks without permission or that it and its website are not authorised to sell the Complainant’s products.
Rights in the FITFLOP mark to which the Domain Name is identical or confusingly similar
The Complainant has rights in the FITFLOP mark based on its use of the mark FITFLOP and of course its registered marks.
The Domain Name is identical or confusingly similar to FITFLOP mark in that it incorporates, in its entirety, the Complainant’s registered FITFLOP trade mark which is its dominating feature. The generic term “shoes” does nothing to distinguish the Domain Name from the FITFLOP mark as such term describes the very products that the Complainant sells.
That the Domain Name is intended to relate to the Complainant is further evidenced by the fact that the website operating at the Domain Name contains several images and descriptions of the Complainant’s products. Consumers are likely therefore to be left with the false impression that the Respondent is authorised to use the Complainant’s images or that the website is somehow affiliated with or endorsed by the Complainant.
The Respondent has no Rights or Legitimate Interest in the Domain Name
Since the Complainant’s adoption and extensive use of the FITFLOP mark predates the registration of the Domain Name, the burden of proof is on the Respondent to establish its rights or legitimate interests in the Domain Name. The Respondent is unable to do so however.
There is no evidence that the Respondent has rights or legitimate interests in the Domain Name. Registration of the Domain Name occurred after the Complainant had made extensive use of the FITFLOP mark and after the Complainant had obtained registrations for its FITFLOP marks worldwide, including in the United Kingdom, where the Respondent is said to be located. In these circumstances, the Respondent was on actual notice of the Complainant’s rights before it adopted the Complainant’s trade mark as its domain name.
The Complainant has never authorised the Respondent to use the FITFLOP mark, or any mark confusingly similar thereto as a domain name or for any other purpose. Moreover, there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorisation by which the Respondent could own or use the Domain Name
Furthermore, there is no evidence to suggest that the Respondent has been or is commonly known by the Domain Name.
The Respondent’s website fails to disclaim any affiliation with the Complainant. Neither the Domain Name itself nor the associated website discloses the lack of any relationship between the Complainant and the Respondent, and there is no mention of the fact that the information on the Respondent’s website has not been endorsed or approved by the Complainant. However, the repeated use of the Complainant’s mark throughout the website, the display of several of the Complainant’s products and the fact that the images at the website are limited exclusively to the Complainant’s goods, creates a false impression of an affiliation with or endorsement by the Complainant. The Respondent’s use of the Domain Name, coupled with its site’s prominent use of the Complainant’s trade marks and photographs of the Complainant’s products, gives consumers the impression that the Respondent’s website is authorised by the Complainant.
The Respondent is clearly aware of the fame of the FITFLOP mark and its website unquestionably trades on it. As such there cannot be a bona fide use. The Respondent merely seeks to exploit the fame of the Complainant’s products by using the Complainant’s mark to attract Internet users who are interested in FITFLOP branded products.
The Respondent Registered and Used the Domain Name in Bad Faith
Given that the Respondent has never been authorised by the Complainant to use the FITFLOP mark, the very fact that the Respondent has registered the Domain Name establishes bad faith use and registration.
The Complainant’s FITFLOP mark enjoys wide recognition. It is therefore inconceivable, particularly in light of the Respondent’s use of the Domain Name, that the Respondent was unaware of the Complainant’s FITFLOP mark when it registered the Domain Name. Indeed, the Respondent is banking on the established goodwill and consumer recognition of the FITFLOP mark to drive traffic to its site.
Because the ultimate effect of any use of the Domain Name will be to cause confusion with the Complainant, the use and registration of the Domain Name must be considered to be in bad faith.
The Respondent has gone to lengths to fuel consumer confusion by making prominent use of the Complainant’s mark and product images.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires a complainant to prove that the respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
The Complainant clearly has rights in the FITFLOP mark based on its use of FITFLOP and its registered marks.
The mark FITFLOP forms the first and dominant part of the Domain Name (being followed by a hyphen and then the descriptive term “shoes”). The Domain Name and trade mark of the Complainant are similar in that the trade mark can clearly be identified within the Domain Name, with the descriptive term “shoes” doing nothing to dispel any confusion. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, it was said “[l]ong-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes”. The use of the word “shoes” immediately after FITFLOP, a widely known trade mark, far from distinguishes the Domain Name from the trade mark but rather could increase the scope for confusion.
Accordingly, there is a clear risk that Internet users may be confused into thinking that the owner of the Domain Name is also the owner of the trade marks to which it is similar, or at least that there is some form of association between the Respondent and the Complainant.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark FITFLOP.
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of that domain name. There must be something more. The Respondent is not authorised by or affiliated with the Complainant. The Respondent does not appear to be known by the Domain Name. A respondent can however demonstrate rights to or legitimate interests in a domain name in other ways, for instance, it can show that it was using a domain name in connection with a bona fide offering of goods or services.
This does not appear to be a case where a domain name containing a trade mark of another points to a website offering for sale or promoting competing products. On the contrary, the website to which the Domain Name points appears to be very much orientated to genuine Fitflop products. This therefore raises the issue of rights capable of arising under the Policy of those that promoting a trade mark owner’s goods, and only those goods, (without any contractual relationship existing between the trade mark owner and domain name registrant). The position is perhaps analogous to re-sellers of genuine goods.
In the Panel’s view, a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name containing a trade mark if the use meets certain requirements, such as the associated website selling only the trade marked goods. However, the site must accurately and prominently discloses the domain name registrant's relationship with the trade mark owner.
In Daimler AG v. William Wood, WIPO Case No. D2008-1712, it was said on this point, “The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).”
The Panel considers that whether or not sales can be made from the Respondent’s website, i.e whether or not the Respondent is a reseller as opposed to a provider of a purely informational or blogging site, in circumstances where the Respondent has used a confusingly similar Domain Name and there is a risk that the Respondent or its website may be mistaken for the Complainant or the Complainant’s site, there should, (as in the case for a reseller), be some form of disclaimer or explanation of the relationship between trade mark owner and owner of the website. Given the absence of any disclaimer in connection its lack of relationship with the Complainant, it cannot be said that there is a bona fide offering of goods.
More generally, there seems to be no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. Furthermore, there is no evidence before this Panel to contradict or challenge the contentions of the Complainant. The Panel therefore finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name. The Panel therefore finds that this element too of paragraph 4(a) of the Policy is established.
It seems clear that the Respondent was aware of the Complainant and its trade mark when it registered the Domain Name. Its manner of use puts this beyond any serious doubt. One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This appears to be the case here.
In all the circumstances, this Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
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 <fitflop-shoes.com> be transferred to the Complainant.
Jon Lang
Sole Panelist
Dated: May 2, 2011