WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vibram S.p.A. v. Yuehua Trading Company
Case No. D2011-0207
1. The Parties
The Complainant is Vibram S.p.A. of Varese, Italy, represented by Avvocati Associati Feltrinelli & Brogi, Italy.
The Respondent is Yuehua Trading Company of Putian, Fujian, the People’s Republic of China.
2. The Domain Names And Registrar
The disputed domain names <thevibramfivefingers.com>, <vibram-fivefingers-sale.com>, and <vibramfootwear.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2011. On February 2, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 3, 2011, GoDaddy.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.
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 February 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2011.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on March 9, 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.
4. Factual Background
The Complainant is an Italian corporation that produces rubber-soled footwear, designed especially for sporting activities. It has operations in several countries, including those in Asia. The Complainant has used the marks VIBRAM and FIVEFINGERS for its footwear products, and holds multiple registrations for these marks, including one in China (for VIBRAM, on March 30, 1986) and the United States (for FIVEFINGERS, on August 8, 2006). Before the Respondent registered the disputed domain names, the Complainant also registered the domain name <vibramfivefingers.it>; Vibram USA registered the domain name <vibramfivefingers.com>.
The Respondent registered the disputed domain names <thevibramfivefingers.com>, <vibram-fivefingers-sale.com>, and <vibramfootwear.com> on January 29, 2010.
5. Parties’ Contentions
The Complainant contends that: (i) the disputed domain names are identical or confusingly similar to a mark or marks in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith.
The Complainant also states that the “domain names at issue are linked to pages which have nothing to do with the Complainant,” Compl. at 7, and that “there is no relationship between [the Complainant] and Respondent,” id. at 9.
The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Under paragraph 14(b), the Panel may also draw appropriate inferences from the Respondent's default.
6. Discussion And Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated its rights in both VIBRAM and FIVEFINGERS, which appear to be distinctive marks when used in connection with the respective footwear products. The Panel determines that each of the disputed domain names is identical or confusingly similar to the Complainant’s mark or marks. The disputed domain name <thevibramfivefingers.com> merely combines the two marks, preceded by an article, and followed by the generic top level domain “.com”; the disputed domain name <vibram-fivefingers-sale.com> inserts a hyphen between the two marks, followed by another hyphen, a generic term (“sale”) and “.com”; the disputed domain name <vibramfootwear.com> attaches to one of the marks a generic term that describes the product (“footwear”) and “.com”. The additions and insertions are not sufficient to defeat confusing similarity with the Complainant’s marks. In each of the disputed domain names, the distinctive mark, VIBRAM or FIVEFINGERS (or both collectively), appears prominently.
The Complainant has demonstrated the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of each of the disputed domain names. In doing so, the Complainant has met its initial burden of making a prima facie showing. The burden then shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent has defaulted. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in any of the disputed domain names, as described in paragraph 4(c) of the Policy, or otherwise.
The second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Complainant must also show that each of the disputed domain names “has been registered and is being used in bad faith,” as set forth in paragraph 4(a)(iii) of the Policy. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of bad faith in the registration and use of a domain name. Under paragraph 4(b)(iv), the bad faith requirement is shown when the Respondent, by using the disputed domain names, has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website . . ., by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s website. This is precisely the case here. Internet users who refer to the disputed domain names are taken to websites that display the VIBRAM and FIVEFINGERS (or “FIVE FINGERS”) marks and include pictures of various rubber-soled footwear products and their respective prices. This is a rather blatant example of what paragraph 4(b)(iv) describes.
The third element of paragraph 4(a) of the Policy is also shown.
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, <thevibramfivefingers.com>, <vibram-fivefingers-sale.com>, and <vibramfootwear.com>, be transferred to the Complainant.
Dated: March 23, 2011