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 Mike Wang of Henan, People’s Republic of China.
The disputed domain names <cheapfitflopboots.com>, <discountfitflop.com> and <salefitflop.com> (collectively “the Domain Names”) are registered with Name.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2011. On March 30, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 30, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Names.
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 April 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2011.
By email to the Center dated April 12, 2011, the Complainant submitted an Amended Complaint, adding an additional domain name said to have been registered by the Respondent, namely <fitflopssale.org> (“the additional domain name”). The Center advised the Complainant by email dated April 13, 2011, that the Rules do not expressly provide for the right to amend a complaint by adding one or more additional domain names after the commencement of the proceedings and that it would be for the panel, when appointed, to decide whether or not the amendment would be allowed.
The Center appointed Warwick Smith as the sole panelist in this matter on May 12, 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.
By procedural direction dated May 19, 2011, the Panel declined to allow the proposed amendment to the Complaint to add the additional domain name. The reasons for that direction are set out in section 6A of this decision.
In the absence of any Response, the Panel has checked the record to ensure that the Center has discharged its responsibility to notify the Complaint to the Respondent under paragraph 2 of the Rules. The Panel is satisfied that the Center has done so.
The Complainant
The Complainant is a company based in London, United Kingdom. It manufactures and sells “FitFlop” footwear.
The Complainant sells its FITFLOP branded products exclusively through authorized retailers, or through the online store on its website at “www.fitflop.com”. That website was launched in May 2007, and online sales began in August 2010. The Respondent is not and has never been an authorized seller of FITFLOP products.
The Complainant’s FitFlop footwear has received media coverage in various publications around the world, including Newsweek Magazine and The Independent newspaper (United Kingdom). A July 2007 article introducing the Complainant’s FitFlop product is said to have been the “most read” story on the “www.thetimes.co.uk” website. The Complainant produced examples of some of the media coverage.
The Complainant says that all of the product packaging for its FitFlop products features a particular stylized version of the word “fitflop” in distinctive white lettering.
The Complainant says that it holds numerous trademark registrations for its FITFLOP trademark. It produced with the Complaint a copy of an extract from the United States Patent and Trademark Office (“USPTO”) online database showing that it is the registered proprietor of the word mark FITFLOP for “sandals for the feet” in international class 25. The filing date was December 5, 2005, and the mark proceeded to registration on December 25, 2007. The mark is registered on the USPTO’s principal register.
The Respondent and the Domain Names
The Domain Names were registered on April 15, 2010.
When the Complaint was filed, the Domain Names <cheapfitflopboots.com> and <discountfitflop.com> were both being used in connection with websites that sold or offered to sell FITFLOP-branded merchandise. The Complainant is not sure whether these products are counterfeits, but it says that in any event their sale has not been authorized by it.
The Complainant produced screenshots of the websites to which those two Domain Names resolved as at March 15, 2011. The Domain Name <salefitflop.com> did not then resolve to any active website.
The website at “www.cheapfitflopboots.com” was an English language website, and appeared to be dedicated solely to the Complainant’s FitFlop products. The expression “fitflop” was reproduced on this website in what appeared to be the same white lettering and font as that used in the Complainant’s packaging and marketing.
The website at “www.discountfitflop.com” appeared to be very similar. Again, it reproduced the Complainant’s FITFLOP word mark, using the white lettering and identical font to that used by the Complainant. The website was again in the English language, and one of the advertisements on the website offered “free UK delivery on all winter styles”. According to the Complainant, the pictures of FitFlop products were taken from the product shots the Complainant itself uses in its marketing.
The Complainant referred in the Complaint to links on these two websites to third party websites offering similar products. However, the Panel did not note any such links in the March 15, 2011 screenshots which the Complainant produced.
Although the Domain Name <salefitflop.com> is not currently linked to any website, a representative of the Complainant was able to access a website at that Domain Name on July 12, 2010. There, the representative completed the purchase of some “FitFlop” sandals. The Complainant provided a declaration signed by its representative attesting to this purchase, with a copy of the relevant credit card statement showing that the sale had been transacted through an online shop at “www.wowshoponline.cn”, based in Hangzhou, China. No shoes were ever delivered from the website to the Complainant’s representative.
The website or websites to which the Domain Names have resolved have not contained any disclaimer stating that the Respondent has no affiliation with the Complainant. A click-on “Frequently Asked Questions” link was provided, but no answers (or indeed any information at all) were provided when one clicked on this link.
Complainant’s Cease and Desist Letter
The Complainant’s representative sent a cease and desist letter to the Respondent on August 17, 2010. The letter referred to the Complainant’s United States registration of the FITFLOP mark.
The letter also included an allegation that the following content was posted on one of the Respondent’s websites:
“FAQ
1. Are these genuine fitflop boots? what about the quality?
YES, our products are authentic in good quality, come with original package.”
The Panel’s visit to the Respondent’s Website
In accordance with accepted practice, the Panel visited the website at “www.discountfitflop.com” on May 22, 2011. The website appeared to be in substantially the same form as the screenshots produced by the Complainant. It offered only “FitFlop” products, and purchases could be made in several currencies, including the United States dollar, the Euro, and the British pound. There was a “FAQ” click-on link, but no content had been posted on the web page to which the site visitor was taken. Other sub-pages on the website included “Fitflop Women”, and “categories”. The Panel did not note any links to third party websites.
The Panel was unable to access any website at “www.cheapfitflopboots.com” or at “www.salefitflop.com”.
The Complainant contends:
1. The Domain Names are confusingly similar to the Complainant’s FITFLOP mark. Each of the Domain Names incorporates, in its entirety, the Complainant’s mark, and that is sufficient to establish confusing similarity for the purposes of the Policy (citing Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Limited) v. Arthur Wrangle, WIPO Case No. D2005-1105). The generic terms “sale”, “cheap”, “boots”, and “discount”, do nothing to distinguish the Domain Names from the Complainant’s FITFLOP mark, as these terms clearly relate to, or can be about, the Complainant (the Complainant has a website where it sells its own boots directly to consumers). Including a generic term with a famous mark aggravates rather than diminishes the likelihood of confusion (citing Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521). The Domain Names are clearly dominated by the Complainant’s FITFLOP mark, and the source-identifying and distinctive elements of the Domain Names are identical to it.
2. The Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant relies on the following contentions:
(i) The Complainant’s adoption and extensive use of its FITFLOP mark predates the registration of the Domain Names by the Respondent, and the Respondent was on actual notice of the Complainant’s rights before it adopted the Complainant’s trademark in the Domain Names. (The fact that the Respondent is using the Domain Names to link to websites selling the Complainant’s products establishes the fact that the Respondent is fully aware of the Complainant and the exclusive association between the FITFLOP mark and the Complainant.)
(ii) The Respondent was given an opportunity to explain its basis for using the FITFLOP mark in the Domain Names when it received the cease and desist letter from the Complainant’s representatives. The fact that the Respondent could not and did not then make any claim to a right or legitimate interest in any of the Domain Names is evidence that no such right or interest exists.
(iii) There exists no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the Domain Names.
(iv) There is no evidence to suggest that the Respondent has been or is commonly known by the Domain Names.
(v) To the extent that the Respondent is offering counterfeit goods or directing consumers to websites where counterfeit goods are sold, such use is not bona fide (Cartier International N.V. v Lee, WIPO Case No. 2009-1758).
(vi) If the goods sold by the Respondent are genuine, sale of those goods is still unauthorized and not bona fide (see Oki Data Americas, Inc. v. ASD. Inc, WIPO Case No. D2001-0903, and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview. 2”) at para 2.3). For a reseller to make a bona fide use of a trademarked term in a domain name, the reseller must, inter alia, accurately disclose the respondent’s relationship with the trademark owner. In this case, the Respondent cannot satisfy that requirement, as neither the Domain Names themselves nor the associated websites disclose the lack of any relationship between the Complainant and the Respondent. On the contrary, the repeated use of the Complainant’s mark (including the distinctive white lettering) and the display of hundreds of the Complainant’s products (and no products of the Complainant’s competitors) combine to create a false impression of an affiliation with, or endorsement by, the Complainant. There can be no fair use where the distinctive lettering style must lead consumers to believe that the web pages are associated with the Complainant (citing Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211).
(vii) Several WIPO Panels have held that a reseller, even an authorized reseller, cannot use a trademark in a domain name without the express consent of the trademark owner (see for example The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc, WIPO Case No. D2000-0113 and Bumble & Bumble LLC v Gladyshev, WIPO Case No. D2008-1956).
(viii) The Domain Names are clearly intended to refer to the Complainant, and the Respondent is seeking to exploit the fame of the Complainant’s products by using the Complainant’s mark to attract to the Respondent’s websites Internet users who are interested in FITFLOP-branded products.
3. The Respondent registered and has used the Domain Names in bad faith. The Complainant relies on the following contentions:
(i) The Complainant’s FITFLOP mark enjoys wide recognition, and it is inconceivable, particularly in light of the Respondent’s very use of the Domain Names, that the Respondent was unaware of the Complainant’s FITFLOP mark when the Domain Names were registered.
(ii) There is clear bad faith if the products sold on the Respondent’s websites are counterfeit products (Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552).
(iii) Even if the goods being sold are not counterfeit, but are merely unauthorized, the Respondent’s sale of those goods through the website or websites at the Domain Names would still be in bad faith (citing Bumble & Bumble LLC – “the Respondent’s use of a domain name incorporating the Complainant’s distinctive BUMBLE AND BUMBLE mark in its entirety, and the further use of the Complainant’s mark on the website, improperly suggest that the site is affiliated with the Complainant and that the Respondent is authorized to sell the Complainant’s line of hair care and beauty products”).
(iv) Given that the Respondent has never been authorized by the Complainant to use its FITFLOP mark, the very fact that the Respondent has registered the Domain Names establishes bad faith registration and use (Veuve Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163).
(v) The Respondent has been using the Domain Names intentionally to attempt to attract, for commercial gain, Internet visitors to the websites that have operated at the Domain Names, by creating a likelihood of confusion with the Complainant’s FITFLOP mark as to the source, sponsorship, affiliation or endorsement of the websites at the Domain Names.
(vi) The Respondent’s failure to respond to the cease and desist letter is further evidence of his bad faith.
The Respondent did not reply to the Complainant’s contentions.
Neither the Policy nor the Rules expressly permit a complainant to amend a complaint by adding an additional domain name. The WIPO Overview 2.0 document summarises the consensus view on this issue reached by WIPO UDRP panels, in the following terms:
“Consensus view:
Provided the complainant has relevant trademark rights … and all relevant domain names are registered by the same domain name holder …, additional domain names may in certain circumstances be added to a complaint after filing but prior to formal commencement of UDRP proceeding…. However: any request for addition of domain names to a complaint only after it has been notified to the respondent and the proceeding has been formally commenced on that basis would normally need to be addressed by the panel (on appointment). Panels have in some cases been reluctant to grant such requests, where received only after appointment. Where panels grant such requests, they would typically order a partial recommencement of the procedure to allow a proper response opportunity in relation to the added domain names.”
In this case, the Complaint was formally notified to the Respondent on April 4, 2011, and the proceeding commenced on that date. It was not until April 12, 2011 that the Complainant sought to amend its Complaint by adding the additional domain name.
The Panel noted that the additional domain name was registered, apparently without the use of a privacy service or other device which would have served to mask the identity of the Respondent, on January 26, 2011.
The issue of the addition of a disputed domain name after panel appointment was considered by the panel in Department of Management Services, State of Florida v. Digi Real Estate Foundation, WIPO Case No. D2007-0547. The panel in that case said:
”The decision of a Panel as to whether to allow the amendment of a Complaint to add further domain names must be made in accordance with paragraph 10 of the Policy. In particular the Panel must ensure that its decision respects the procedural rights of the Parties (paragraph 10(b)), and is compatible with the Panel’s obligation to ensure the administrative proceeding takes place with due expedition (paragraph 10(c)).
Respect for the Respondent’s procedural rights means that the addition of another domain name to the Complaint requires re-notification of the Respondent and a new period of twenty days to submit a Response in accordance with paragraph 5 of the Policy. For this reason the procedural economy of hearing two domain name disputes between the same parties together might be outweighed by the Panel’s obligation to determine the original dispute with due expedition, as in the Archipelago Holdings decision [Archipelago Holdings LLC v. Creative Genius Domain Sales and Robert Aragou d/b/a Creative Genius Domain Sales, WIPO Case No. D2001-0729] referred to above.
The Archipelago Holdings decision recognises that certain circumstances make the addition of a domain name more acceptable, including “if it were made shortly after the domain names were registered, especially if they were registered after the filing of the initial Complaint”. This is exactly the case before the present Panel, where the additional domain name was registered three days after the notification of the Complaint to the Respondent on April 17, 2007.
However, the Panel must reject the request for an amendment even in these circumstances, because the addition of a new domain name after a sole panelist has been appointed is inconsistent with the Panel’s duty to ensure the Parties are treated with equality. Procedural equality means that each party must have the option of having the dispute determined by a three member panel (see paragraph 3(b)(iv), 5(b)(iv) and (v) and 5(c) of the Policy). However, if the amendment to the Complaint were now allowed, and a new domain name added, then the Respondent would have lost the right to have the dispute regarding the additional domain name determined by a three member Panel.
This procedural problem cannot readily be solved by providing an opportunity for the Respondent to object to the addition of a new domain name on the basis that it wishes to exercise its right to a three member panel in respect of the added domain name, as such a course further complicates the procedure, and is likely to create additional delay. In this Panel’s view the course most consistent with paragraph 10 of the Policy, and the principles of the UDRP system, is generally not to permit the addition of new domain names to a Complaint after a single member panel has been appointed. This might appear hard to a complainant, as in the present case, not guilty of any omission, oversight or delay, but is an inherent limitation in the simplified dispute resolution system for domain names. It is, of course, open to the Complainant to bring a separate Complaint in respect of the additional domain name if it so desires.”
That reasoning seemed to this Panel to be compelling. In particular, this Panel agreed with the view that the Policy requirement of procedural equality means that each party must have the option of having the dispute determined by a three-member panel, and the Respondent would have lost that right in respect of the additional domain name if the Panel had allowed the proposed amendment. It was not for the Panel to simply assume that the Respondent would not wish to exercise his right to call for a three-member panel to resolve the dispute over the additional domain name, and offering the Respondent an opportunity to state his position on the point would only have resulted in further delay.
Furthermore, this was not a case where the additional domain name was registered only after the Complainant filed its Complaint. The additional domain name was registered approximately 2 months before the Complaint was filed.
Having regard to the foregoing considerations, the Panel formed the view that a separate Complaint should be commenced in respect of the additional domain name, and that the Complainant’s application to amend its Complaint to add the additional domain name should be declined.
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed 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 disputed domain name; and
(iii) That the disputed 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 in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted 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 Complainant has proved this part of the Complaint.
It has proved that it is the registered proprietor of the word mark FITFLOP in the United States, and that mark is included in its entirety within each of the Domain Names. The Panel accepts the Complainant’s contention that the addition of generic words such as “sale”, “discount”, “cheap”, and “boots” do nothing to mitigate the confusion likely to be caused by the use of the Complainant’s mark in the Domain Names. That is particularly so in a case such as the present, where each of the generic words which appear in the Domain Names could easily have been associated with the Complainant (the Complainant itself sells boots, and the expressions “sale”, “discount”, and “cheap” are common words which would frequently be used in the selling of consumer items such as footwear). The Panel concludes without difficulty that the Domain Names are all confusingly similar to the Complainant’s FITFLOP mark.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, Second Edition (“WIPO Overview 2.0”) as follows:
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Complainant has not authorized the Respondent to use its FITFLOP mark, whether in a domain name or otherwise. There is nothing in the evidence to suggest that the Respondent (or any business or other organization owned by him) might be commonly known by any of the Domain Names, and therefore nothing to suggest that the Respondent might have a right or legitimate interest in one or more of the Domain Names under section 4(c)(ii) of the Policy. The Respondent’s use of the Domain Names has clearly been commercial, so the Respondent could not have any right or legitimate interest in the Domain Names under paragraph 4(c)(iii) of the Policy. Furthermore, for the reasons which are set out in the next section of this decision, the Panel is satisfied that the Respondent’s use of the Domain Names has been neither “legitimate” nor “fair” within the meaning of those expressions as used in paragraph 4(c)(iii) of the Policy. For the same reasons, the Panel is satisfied on the evidence that the use which the Respondent has been making of the Domain Names has not been in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy.
In those circumstances, the Complainant has made out a sufficient prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The burden of production therefore shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Names. The Respondent having failed to file any Response, that burden has not been discharged, and the Complainant therefore succeeds on this part of the Complaint.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include the situation where …:
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location
It is plain from the content of the Respondent’s website or websites that the Respondent has been well aware of the Complainant and its FITFLOP mark. In the absence of any response, the Panel infers that that was the case when the Respondent registered the Domain Names on April 15, 2010. That being so, the Respondent cannot have failed to appreciate the likelihood that including the Complainant’s FITFLOP mark in full in the Domain Names would lead many Internet users who were familiar with the Complainant and its Fitflop footwear to believe that any website at the Domain Names would be operated or endorsed by the Complainant. If the Respondent appreciated that likelihood, as in the Panel’s view he must have done, he must also be taken to have intended that that sort of confusion would occur.
The Panel accepts the Complainant’s submission that if the Respondent has in fact been offering counterfeit Fitflop goods on websites at the Domain Names, such use could never have been bona fide (Cartier International, N.V., Cartier International, B.V. v. Lee, WIPO Case No. D2009-1758). The alternative scenario is that the Respondent has somehow sourced genuine Fitflop products, and has been marketing those through a website or websites at the Domain Names. If the Respondent has been marketing genuine Fitflop products, his bona fides fall to be judged under the test laid down in the Oki Data Americas Inc case. One of the requirements enumerated by the panel in that case was that any website at the relevant disputed domain name must disclose the respondent’s relationship with the trademark owner. The Panel accepts the Complainant’s submission that that has not occurred in this case, and that, even if the Fitflop products marketed by the Respondent have been genuine products, the Respondent’s use of the Domain Names cannot be regarded as bona fide.
The fact that the Respondent has copied the distinctive white lettering which the Complainant uses in its own marketing, also leaves little room for doubt that the Respondent’s true intention has been to ride on the back of the Complainant’s goodwill in its FITFLOP mark. Site visitors arriving at the Respondent’s website(s) expecting to find a website operated or endorsed by the Complainant, will be further encouraged in their mistaken beliefs by the use of the Complainant’s distinctive white lettering in the word “FlipFlop”, and by the absence of any disclaimer making it clear that the Respondent has no connection with the Complainant. The circumstances fall squarely within paragraph 4(b)(iv) of the Policy – by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or websites which the Respondent has operated at the Domain Names, by creating a likelihood of confusion with the Complainant’s FITFLOP mark as to the source, sponsorship, affiliation, or endorsement of that website or those websites.
The Complainant having proved each of the three elements it is required to prove under paragraph 4(a) of the Policy, the Domain Names must be transferred to the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <cheapfitflopboots.com>, <discountfitflop.com>, and <salefitflop.com> be transferred to the Complainant.
Warwick Smith
Sole Panelist
Dated: May 26, 2011