WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vibram S.p.A. v. Zhuang Ling-Ling Zhuang
Case No. D2010-1471
1. The Parties
The Complainant is Vibram S.p.A. of Italy, represented by Avvocati Associati Feltrinelli & Brogi of Italy.
The Respondent is Zhuang Ling-Ling Zhuang of Shanghai, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <fivefingerskso.com> is registered with Bizcn.com, Inc (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2010. On September 2, 2010, the Center transmitted by email to the Registar a request for registrar verification in connection with the disputed domain name. On September 3, 2010, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 7, 2010, the Center issued a notice to the parties by email in both Chinese and English regarding the language of proceedings. On September 8, 2010, the Complainant submitted a request for English to be the language of proceedings. The Respondent did not comment on the language of proceedings by the due date specified by the Center.
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 September 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2010.
The Center appointed C. K. Kwong as the sole panelist in this matter on October 14, 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 Panel extended the time for its decision to November 3, 2010 due to exceptional circumstances.
4. Factual Background
The Complainant is the owner of trade marks consisting of or embodying the word FIVE FINGERS. These registrations include International Registrations (i) no. 978630 for the word mark “FIVEFINGERS” which was registered on June 20, 2008 in respect of certain goods under Class 25 (with an extension to China) and (ii) no. 917017 for the mark consisting of the word “FIVEFINGERS” and the word “VIBRAM” contained in an octagon device which was registered on January 18, 2007 in respect of certain goods under Class 25 (with an extension to China).
The Complainant is also the owner of numerous trade marks consisting of or embodying the word VIBRAM. These registrations include, in particular, the following :-
(a) International Registrations (i) no. 337824 for the word mark VIBRAM which was registered on June 23, 1967 in respect of certain goods under Classes 17 and 25; (ii) no. 915254 for the mark VIBRAM in stylized form which was registered on January 30, 2007 in respect of certain goods under Classes 12, 26 and 28 (with an extension to China);
(b) Chinese trademark registration no. 246873 for the word mark VIBRAM under classification 54 in respect of “hats, boots, shoes, slippers, sandals, rubber soles and heels” which was registered on March 30, 1986.
The uncontradicted evidence produced by the Complainant shows that the registration of its FIVEFINGER word mark took place well before the registration of the disputed domain name <fivefingerskso.com> which took place on April 9, 2010.
Other than the particulars shown in the printout of the database searches conducted by the Complainant against the WhoIs database (as provided in Annex A to the Complaint) and the website to which the disputed domain name resolves (as provided in Annex H to the Complaint) and the WhoIs database search results updated to September 13, 2010 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainant has made the following contentions :
1. The Complainant is the world leader in high performance rubber soles, targeted to the outdoor, work, recreation, fashion, repair and orthopedic markets. Over the past 70 years, it has positioned itself in setting the market standard.
2. Each new Vibram product is designed with three objectives: to guarantee the best performance, the maximum level of comfort and the quality over time. These are realized by the stringent tests executed in the laboratory and in the field.
3. While headquartered in Italy, Vibram S.p.A. operates in over 120 countries and has a production centre in Guang Dong, China.
4. Among other products, its “FiveFingers” line enjoys a substantial goodwill and high reputation all around the world.
5. It is the owner of registrations for the FIVEFINGER and VIBRAM trademarks described in Section 4 above, long before the registration of the disputed domain name.
6. The domain name in dispute wholly reproduces the trademark FIVEFINGERS with only the addition of the term “kso”, which represents a reference to a specific model of FiveFingers named “KSO” (see Annex D to the Complaint, in which the kso model is shown and described therein as: “In just over a year, the kso has become our most popular model for men. Featuring a thin, abrasion-resistant stretch nylon and breathable mesh upper that wraps your entire forefoot to “Keep Stuff Out”. It also does not correspond to a trademark registered in the name of “Zhuang Ling – Ling Zhuang”.
7. The domain name in dispute does not correspond to the Respondent’s name, who is not commonly known as <fivefingerskso.com>.
8. The Complainant has never licensed, authorized or otherwise permitted the Respondent to register and use the domain name or the trademark “FIVEFINGERS”. The Respondent also is not a licensee or a dealer, agent or distributor of Vibram products. The website in question sells Five Fingers–like shoes which are prima facie counterfeits at non-conventional prices. There can be no fair or non-commercial use of the disputed domain name by the Respondent.
9. The trade marks VIBRAM and FIVEFINGERS are well known around the world. The adoption of the trademarks VIBRAM and FIVEFINGERS on the Respondent’s website in association with footwear that are moulded with distinct toes is not a mere coincidence. The Respondent knew or should have known of the Complainant’s registration and use of the trademark FIVEFINGERS prior to registering the disputed domain name.
10. The Respondent has made an illegitimate use of the disputed domain name, and has chosen to register it purely to create an association with the Complainant and its products. In the website to which the disputed domain name resolves, the trademarks FIVEFINGERS and “VIBRAM contained in an octagon device” with a registered trademark sign (i.e., the letter R within a circle) are used without any license or authorization of the Complainant.
11. The said website contains images that are similar to the images shown in the Complainant’s “www.vibramfivefingers.com” website. Such use of images that are identical to the images that appear in the Complainant’s website, along with Complainant’s said trademarks, prove that the Respondent attempted to create a false impression of association with the Complainant.
12. The Respondent’s use of the Complainant’s trademarks to promote goods that are regularly sold by the Complainant is evidence of passing off.
13. The Respondent knowingly choose a domain name consisting of the Complainant’s trademark “FIVEFINGERS” to take advantage of the Complainant’s fame and reputation which causes damages to the Complainant resulting in diversion and loss of business.
14. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves by creating a likelihood of confusion with the Complainant’s trademarks and its official website “www. vibramfivefingers.com” as to the source, sponsorship, affiliation, or endorsement of the website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Notice of Proceedings
Having considered the records in the case file, the Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center.
B. Language of Proceedings
In response to the Center’s notification in English and Chinese of September 7, 2010 to both parties concerning the language of proceeding, the Complainant filed a request for English to be the language of this administrative proceeding on September 8, 2010.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the registration agreement for the disputed domain name is Chinese as confirmed by the Registrar.
In support of its request, the Complainant has inter alia argued that the contents of the website to which the disputed domain name resolves is entirely in English. It clearly demonstrates the Respondent’s choice of and ability to use the English language. By using English in these proceedings, the Complainant is complying with such Respondent’s choice.
The Panel has taken into consideration the fact that (a) the disputed domain name consists entirely of English letters (being a combination of (i) the English mark of the Complainant and (ii) the English acronym “kso”) (b) the Respondent has provided the contact details in English to the Registrar; and (c) the entire contents of the website to which the disputed domain name resolves (as shown in Annex H to the Complaint) is in English.
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’ abilities to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
C. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall 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”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the mark FIVEFINGERS. As the disputed domain name is not identical to the registered mark, the Panel needs to further consider whether the disputed domain name <fivefingerskso.com> is confusingly similar to the Complaint’s registered mark FIVEFINGERS.
It is noted that the disputed domain name <fivefingerskso.com> has incorporated the Complainant’s trademark FIVEFINGERS entirely but with the three letters “kso” added at the end which is then followed by the generic top level domain “.com”. It is well-established practice to disregard the top-level part of a domain name “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416. It is well recognized that for general consumers, the first syllables are generally more important. In this case, the first syllables of the disputed domain name are “fivefingers” and this word is also a rather unusual trademark. Given the tendency of persons using the English language to slur the termination of words, the entire expression may be pronounced as “fivefingers-so” (with the consonant “k” being silent or combined with the syllable “so” rendering it hardly noticeable). The two pronunciations are “fivefingers” and “fivefingersso”, which are confusingly similar. Applying the imperfect recollection test to ordinary consumers having an ordinary memory, they are liable to be deceived or confused. The fact that “kso” is an important series under the Complainant’s “fivefingers” line of products as shown in Annexes “c” and “d” to the Compliant referred to in point 3 below will make actual confusion among consumers even more likely.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, there is prima facie evidence of the Complainant’s asserted registration and use of the registered trade mark FIVEFINGERS well before the Respondent’s registration of the disputed domain name <fivefingerskso.com> on April 9, 2010. Further, the Panel notes that the names of the registrant and the registrant organization do not correspond in any way with the disputed domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as <fivefingerskso.com>. There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
There is no legitimate explanation on the record as to why it was necessary for the Respondent to adopt the word “fivefingerskso” in its domain name.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is established.
3. Registered and Used in Bad Faith
The printout of the disputed website as shown in Annex H to the Complaint contained the following :
(a) the words “fivefingers” and “vibram” in an Octagon device being used as trademarks;
(b) references to the corresponding Five Fingers Classic and kso product lines of the Complainant; and
(c) certain product photos which closely resemble the Complaint’s corresponding Five Fingers product photos as shown in Annexes C and D to the Complaint.
In view of the Complainant’s unequivocal assertion that the Respondent is not an authorized dealer of VIBRAM, the above (i) use of the Complaint’s trade marks with an R within a circle sign i.e., the registered trade mark sign, as shown in the website in question by the operators of that site which is owned or authorized by the Respondent would be a false claim or description and (ii) the presence of the said product line descriptions and photos would be deceptive as to their origin.
Given the Complainant’s uncontradicted claim of registration of its trade mark FIVEFINGERS and apparent use of that mark well before the registration of the disputed domain name in 2010, there is a strong case for the Respondent to come forward to defend itself. Unfortunately, the Respondent has not come forward with any defence.
It is the Complainant’s uncontradicted claim that the goods marketed in the website of “www.fivefingerskso.com” are Five Fingers–like shoes which are counterfeits being offered at a non-conventional price. The public is being misled into believing that such products, are associated or otherwise connected with the Complainant resulting in damage and injury to the Complainant. The Respondent has registered the disputed domain name and allowed the operators of the website to which the disputed domain name resolves, to use it primarily for selling goods in a way which disrupts the business of the Complainant. On the basis of the evidence adduced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operators of the site in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
From the materials presently presented to the Panel, it is also not possible to foresee any plausible genuine use of the disputed domain name by the Respondent or the operator of the website in question.
The Panel finds that the domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
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 <fivefingerskso.com> be transferred to the Complainant.
C. K. Kwong
Dated: November 3, 2010