The Complainant is FitFlop Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Arvin Edwards of Tennessee, United States of America.
The Disputed Domain Name <fitflop-talk.com> is registered with Dynadot, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2011. On March 18, 2011, the Center transmitted by email to Dynadot LLC. a request for registrar verification in connection with the disputed domain name. On March 18, 2011, Dynadot, LLC. 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 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2011.
The Center appointed Nicholas Weston as the sole panelist in this matter on April 26, 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.
Further, the Panel is satisfied that the Center has correctly forwarded a complete copy of the Complaint (including any annexes) to the Respondent by email to the registrar-confirmed email address of record and that Written Notice (as defined under paragraph 1 of the Rules) of the Complaint has been sent to any available postal addresses and facsimile addresses.
The Complainant, FitFlop Limited, is an English and Welsh company that has manufactured and sold footwear since 2007
The Complainant holds separate registrations for the FIT FLOP mark, and variations of that mark, in more than 50 countries. In addition to these, it holds a Community Trademark and International (Madrid Protocol) Registration from February 23, 2007 for the word mark FITFLOP in class 25 for footwear. The FIT FLOP mark is also registered in classes 10, and 35 for a variety of orthopaedic, orthotic, chiropody and footcare goods, apparatus and services.
The Complainant conducts business on the Internet using numerous domain names containing the word FITFLOP including <fitflop.com> with a footwear business website resolving from this domain. The Complainant also sells its footwear through a number of authorized and well known third party online and retail department stores.
On January 14, 2010 the Respondent registered the Disputed Domain Name <fitflop-talk.com>.
The Respondent uses the Disputed Domain Name as of the date of this Decision to point to a weblog style page that offers footwear information in connection with the Complaint’s products and services.
The Complainant cites its worldwide registrations of the trademark FITFLOP including in the United States, European Union and related trademarks consisting of, or including this word, and, alternatively, its logo, as prima facie evidence of ownership.
The Complainant submits that its trademark is distinctive and well-known and that their rights in this mark predates the Respondent’s registration of the Disputed Domain Name <fitflop-talk.com>. It submits that the Disputed Domain Name is confusingly similar to its trademarks, because the Disputed Domain Name incorporates in its entirety the trademark FITFLOP (citing Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd.) v. Arthur Wrangle, WIPO Case No. D2005-1105) and that the similarity is not removed by the addition of the descriptive word “talk”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademarks (citing: Charles Schwab & Co., Inc. v. Josh Decker d/b/a I GOT YOUR TIX, WIPO Case No. D2005-0179; Guerlain S.A. v. HI Investments, WIPO Case No. D2000-0494). The Complainant also contends that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services (citing: Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends as follows: “Given that Respondent has never been authorized by Complainant to use the FITFLOP mark (which wholly incorporates the Complainants registered trademark FITFLOP together with a descriptive term, the word “talk”) the very fact that Respondent has registered the Disputed Domain Name establishes bad faith use and registration” (citing: Veuve Cliquot Ponsardin Maison Fondée en 1772 v. Polygenix Group Co., WIPO Case No. D2000-0163). The Complainant also argues that the its mark is so well known that it would be “inconceivable” the Respondent was not aware of its mark when registering the Disputed Domain Name (presumably alluding to theTelstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 decision). On the issue of use, the Complainant contends that the Respondent uses the Disputed Domain Name for directing traffic to its webpage “for commercial gain” and that such use constitutes the kind of opportunistic bad faith that cases such Philip Morris Incorporated v. Alex Tsypkin, Supra; and Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 expressly prohibit.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the domain name is 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.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the panel considers appropriate. The Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the joined Respondent by reasonable means.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark FITFLOP in the United States and numerous other countries. The Panel finds that the Complainant has rights in the mark FITFLOP that dates back, based on CTM Registration Number 4801817 on the OHIM register, at a minimum, to February 2007.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark FITFLOP (b) followed by the word “talk” (c) followed by the top level domain suffix “.com” all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name should be disregarded. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “fitflop-talk”.
It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of descriptive words such as, in this case, “talk”. (see e.g. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (addition of ordinary descriptive word as prefix or suffix to a world-famous mark such as SONY does not detract from overall impression of the dominant part of the name, the famous mark); America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184 (use of short phrases with well-known mark still found confusingly similar to that mark) and Carfax, Inc. d/b/a Carfax v. Auto Check USA, WIPO Case No. D2001-0929 (“[t]he mere addition of the generic word “talk” in the [d]isputed [d]omain [n]ame does not avoid the likelihood of confusion under Policy Paragraph 4(a)(i)”). Panels have also found that combining a well-known trademark with a generic suffix tends to aggravate, not dispel, likelihood of confusion (see: Nintendo of America, Inc. v. Tyasho Industries and Thomas G. Watson, WIPO Case No. D2001-0976).
Numerous other panels have also determined that the addition of the term “talk”, does not so change the meaning of the Disputed Domain Name so as to prevent a finding of confusing similarity (see: Lance Armstrong Foundation v. Chris Angeles, WIPO Case No. D2005-0888; Corbis Corporation v. RegisterFly.com/Whois Protection Service/surf advertising company/ Joseph, Graham, WIPO Case No. D2006-0546; Talktalk Telecom Limited, CPW Brands Limited v. Hélio Bragança (a.k.a. N/A), WIPO Case No. D2010-0361; Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the [w]ebsite, they have already been confused by the similarity between the domain name and the [c]omplainant’s mark into thinking they are on their way to the [c]omplainant’s [w]ebsite”. The Disputed Domain Name is therefore confusingly similar to the Complainant’s trademarks.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interest in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The evidential burden then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0“), paragraph 2.1).
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, this business model is generally recognized under the Policy as legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See National Trust for Historic Preservation v. Barry Preston, Supra; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Complainant has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant further contends that the Respondent “merely seeks to exploit the fame of Complainant’s products by using Complainant’s mark to attract Internet users
who are interested in FITFLOP branded products to its website.” The Complainant provided evidence that typing in the Disputed Domain Name diverts traffic to a webpage linking to other pages each containing the Complainant’s trade mark and commentary on the Complainant’s footwear, and other footwear including including an extended discussion of “flip flops”, a term commonly used in New Zealand to denote a form of footwear comprising a rubber base loosely held to the foot by a Y shaped strap. Prima facie, it appears that the Respondent is directing Internet users to a page composed of discussion in connection with the same industry sector as the Complainant’s trademarks. However, the jejune evidence provided assists little in an assessment of whether the Respondent is a fan, a reseller, a miscreant or into which category it falls.
The WIPO Overview 2.0, summarizes the consensus position of panel decisions regarding the rights of resellers and distributors in the following terms: “Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder.” The Complainant has demonstrated that these conditions have not been met in this case: the Respondent does not explicitly offer the Complainant's products for sale exclusively or at all, and the Complainant's trademarked goods is not the only footwear discussed on the website.
Nor is this site clearly distinctive from the Complainant’s official site, containing as it does a representation of the Complainant’s trade mark on each webpage to which it resolves (see WIPO Overview 2.0, paragraph 2.5). Most such webpages resolving from the Disputed Domain Name also solicit the consumer to “Leave a Reply” or in other words, contact the Respondent which, of itself, may be innocuous but in the context of the above factors, and the fact that no actual replies appear on the website appears on a balance of the probabilities to amount primarily to a pretext for commercial advantage rather than a genuine blog.
Therefore, this Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name to misleadingly divert consumers and opportunistically using the Complainant’s mark in order to attract Internet users to its website either for the purpose of selling unauthorized goods or, alternatively, for the purpose of bait-and-switch advertising (see Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313 (Respondent is offering for sale not only the Complainant’s genuine product, but also a generic competitor. It is therefore using a domain name confusingly similar to the Complainant’s trademark to attract customers, who are then offered the choice of the Complainant’s product, and a competing product at a lower price); Nikon, Inc. and Nikon Corporation v. Technilab Inc., WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras is not a legitimate use); Kanao v. J.W. Roberts Co., WIPO Case No. D2002-946 (bait and switch is not legitimate)).
In the absence of a substantive Response, the Panel finds for the Complainant on the second element of the Policy.
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, [relevantly]:
(ii) [respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; or
(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see, Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The trademark FITFLOP is so well-known in the United States of America for footwear that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating these marks without knowing of them. Indeed, it is plain from the content of the Respondent’s website that the Respondent was aware of the Complainant’s rights to the FITFLOP trademarks at the time the Disputed Domain Name was registered, indicating that such registration was made in bad faith. Further, the content and lack of replies or comments indicates to this Panel, on the balance of probabilities, that this is not a genuine blog but merely a façade, the true purpose of the Dispute Domain Name being to generate Internet traffic to the Respondent’s website.
Two conclusions can therefore be drawn about Respondent from its use of the Disputed Domain Names resolving to these disingenuous discussion pages. First, its conduct in diverting Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., Supra and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814). Second, in this Panel’s view, it is also in breach of the “Dynadot Service Agreement” of the Registrar for breach of the warranty: “You agree and warrant that: (iii) neither Your registration, application, and/or transaction request, nor use of any of Dynadot’s services, nor the manner in which You intend to use Dynadot’s services will directly or indirectly infringe the legal rights of a third party.”
This Panel finds that the Respondent has taken the Complainant’s well-known trademark FITFLOP and incorporated that mark into the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users to a webpage for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For 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-talk.com> be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Dated: May 9, 2011