WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FitFlop Limited v. ds a.k.a. trade ds, summer a.k.a. summer buy, qiongqiong, ren xiaoqing a.k.a. xiaoqing ren, business
Case No. D2011-1514
1. The Parties
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 ds a.k.a. trade ds, summer a.k.a. summer buy, qiongqiong, ren xiaoqing a.k.a. xiaoqing ren, and business of Putian, Fujian, China.
2. The Domain Names and Registrar
The disputed domain names <discountfitflops.net>, <fitflopclearancesale.org>, <fitflopsale.org>, <fitflopsingapore.com>, <fitflopsingapore.net>, <fitflopssaleuk.com>, and <sandaliasfitflop.com> are registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the Center on September 8, 2011. On September 9, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain names. On September 9, 2011, Name.com LLC transmitted by email to the Center its verification response confirming that the various designations of Respondent are listed as registrant and providing the contact details to the extent available.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint to the email address indicated in all registrations, and the proceedings commenced on September 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 5, 2011.
On September 29, 2011, the Complainant transmitted by email a supplemental request, adding two further domain names (<fitflopsingapore.org> and <sandaliasflipflop.net>) to the current proceeding. On September 30, 2011, the Center acknowledged receipt of the Complainant’s supplemental filing.
The Center appointed Dr. Bernhard Meyer as sole panelist in this matter on October 14, 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 manufactures and sells footwear in more than fifty countries under the FITFLOP and FITFLOPS trademarks (hereinafter collectively referred to as “FITFLOP” or “FITFLOP trademark”). As shown by the Complainant, the FITFLOP trademark is protected in more than fifty countries, and the Complainant owns approximately twenty-seven FITFLOP registrations around the world (see Exhibit H to the Complaint). The FITFLOP trademark has been used in the United States since 2007, approximately four years before the period of April 2011 until August 2011 when the Respondent registered the disputed domain names. The Complainant sells its Fitflop branded products exclusively through authorized retailers. Also, Fitflop branded products can be purchased from the Complainant’s own e-commerce site, namely, “www.fitflop.com”. The website was launched in May 2007 and transactional e-commerce was added to the site in August 2010.
The Respondent is an unidentified individual or company seemingly based in China. The disputed domain names were registered between April 2011 and August 2011 with the registrar Name.com LLC.
5. Parties’ Contentions
The Complainant states that it possesses rights in the FITFLOP trademark based on its use for footwear products sold since 2007, its web presence at the domain name <fitflop.com> since 2007, and twenty-seven international trademarks registrations all over the world.
The Complainant further contends that six of the domain names registered by the Respondent are identical or confusingly similar to its well-known FITFLOP trademark and its <fitflop.com> domain name. The seventh domain name, <fitflopsale.org>, is allegedly connected to a parked website which is designed to attract Internet users so that the Respondent may generate “pay-per-click” revenues.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names. Neither the disputed domain names nor the associated websites would be based on any relationship between the Complainant and the Respondent. The repeated use of the Complainant’s mark on the websites associated with the disputed domain names, the display of hundreds of the Complainant’s products, and the fact that the images at the websites are limited exclusively to the Complainant’s goods, create the false impression of an affiliation with or endorsement by the Complainant.
The Complainant contends that the Respondent registered and used the domain names in bad faith, using the disputed domain names and Complainant’s trademark to generate unauthorized sales and non-genuine profits and to falsely suggest a connection to the Complainant.
The Respondent did not react to the Center's invitation to file a reply to the Complainant’s contentions. Neither did Respondent contest the facts alleged by Complainant.
6. Discussion and Findings
A. Preliminary Issues
A1. Respondent’s Identity
The Respondent appears under different names and incomplete details in the registration documents (ds a.k.a. trade ds, summer a.k.a. summer buy, qiongqiong, ren xiaoqing a.k.a. xiaoqing ren, business), but the email address, the street address and the province is always the same: Putian, Fujian, China. It must be assumed that the registrant in spite of the different names is one individual or company only whose correct identity is unknown to the WIPO Arbitration and Mediation Center (the “Center”) and the domain name registrar (see below).
A2. Supplemental Filing of Complainant
The Panel received and reviewed the supplemental filing that was made by the Complainant to the Center on September 29, 2011, requesting to add two further domain names to the current proceeding (see above, section 3). The Complainant argues that, upon information and belief, the Respondent in the Supplemental Complaint is one and the same person or entity as for the seven domain names included in the original Complaint. Further, the Complainant explains that the WhoIs information for each of the nine domain names was believed to be fictitious. The Complainant states that evidence from the websites associated with each of the domain names would indicate common ownership or control. Therefore, the Complainant requests that all nine domain names should be included in a single UDRP action.
The Rules provide for the submission of one Complaint by the Complainant and one Response by the Respondent. No express provision is made for supplemental filings by either side, except in reply to a deficiency notification or request by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings.
WIPO Overview on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.8 reflects the UDRP Panels' consensus view concerning circumstances under which further domain names may be added to a complaint already filed. According to this view, additional domain names may, in certain circumstances, be added by the provider prior to the formal commencement of a UDRP proceeding, subject to provider's acceptance and without prejudice to the panel's discretion. On the other hand, once a complaint has been notified to the Respondent and thus the proceeding has formally commenced, the adding of further domain names lies in the hands of the Panel, once appointed.
In this connection, the present Panel finds that:
If a panel decides to include additional domain names to a UDRP proceeding that has already commenced (i.e. after the Respondent was notified), the UDRP Rules and due process, as well as practical considerations, require that all earlier procedural steps have to be recommenced with respect to the additional domain names. The panel thus would have to issue an administrative panel procedural order, generally accepting the complainant’s request for supplemental filing, and the panel would have to ask the Center to send a request of registrar verification to the relevant registrar. The Center would then complete the compliance checklist for the amended Complaint, and provide the respondent with an additional 20 days for the response.
Considering the above, and in the interest of a speedy proceeding which lies particularly in the Complainant's interest, the Panel decides not to include the two additional domain names which were submitted belated and will not consider them in this proceeding.
B. Examination of the UDRP Requirements
Paragraph 4(a) of the Policy states that in order to transfer the disputed domain names, the Panel shall examine if all of the following elements are established:
(i) The domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
1. Identical or Confusingly Similar
The Panel accepts that the FITFLOP trademark is distinctive, which is registered in a large number of jurisdictions throughout the world. It is widely known. The disputed domain names incorporate the FLIPFLOP trademark in its entirety. It is well-established that where a domain name incorporates complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (see Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105).
Furthermore, the words “discount”, “clearance”, “(on) sale” and “sandalias”, are generic terms. When a respondent merely adds generic or descriptive terms to a distinctive and widely known trademark, the domain name should be considered confusingly similar to the registered trademark (see Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521). Besides, in this Panel’s view adding a generic term to a well-known trademark aggravates rather than diminishes the likelihood of confusion.
The geographic terms “Singapore” and “UK” also are not sufficient to distinguish the disputed domain names from the protected FITFLOP trademark. The addition of a geographical term does not prevent the domain name from being confusingly similar to the Complainant’s trademark. Internet users are confused into thinking that the disputed domain names were associated with the Complainant, and in particular with Complainant's business in those geographic locations (see Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437).
The Panel thus finds that the disputed domain names are confusingly similar to the FITFLOP trademark in which the Complainant has rights, and that the requirement of paragraph 4(a)(i) of the Policy is met.
2. Rights or Legitimate Interests
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The uncontested evidence is that the Respondent registered the disputed domain names four years after the Complainant established its rights in the FITFLOP trademark. The Panel concludes that the Respondent knew of Complainant’s business and was aware of the Complainant’s rights in the FITFLOP trademark when it registered the disputed domain names with Name.com LLC in 2011, particularly because the Respondent displayed and continues to display both the Complainant's products and its FITFLOP trademarks on the web sites at the disputed domain names.
It is also established in the Panel's view that the Respondent is in no way associated or affiliated with the Complainant, and that there is no relationship whatsoever between the parties that could be interpreted as the grant of a license, permission, or other right by which the Respondent could own or use any domain names incorporating the Complainant’s trademark.
The Panel is therefore satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
The Panel also finds no evidence that the Respondent is commonly known by the disputed domain names or that the disputed domain names are in any other way identified with or related to rights or legitimate interests of the Respondent. The Panel accepts the Complainant’s argument that Respondent registered the disputed domain names and used the Complainant’s trademark to profit from web traffic generated by and with consumers seeking to purchase the Complainant’s products, or from web traffic generated by the association and goodwill associated with the disputed domain names incorporating the Complainant’s well-known FITFLOP trademarks.
Thus, the Panel concludes that the Respondent has not produced evidence to establish a legitimate noncommercial or fair use of the disputed domain names, or that the Respondent has any other rights or legitimate interests in the disputed domain names.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
3. Registered and Used in Bad Faith
The Panel accepts that where a domain name is so obviously connected with a well-known product, its very use by someone with no connection to that product suggests opportunistic behavior and bad faith (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). As the Complainant alleges in a convincing manner, no disclaimers are is present on any of the Respondent’s websites that would indicate to consumers that the Respondent was not affiliated with the Complainant, that the Respondent was using the Complainant’s FLIPFLOP trademark without permission of the Complainant, or that the Respondent and its affiliated websites were not authorized to sell the Complainant’s products. Besides, this Panel finds that the sale of counterfeit goods on a website accessible through the disputed domain names is paradigmatic bad faith (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552).
The Panel is therefore satisfied that the Respondent is using the disputed domain names intentionally to attract, for commercial gain, Internet visitors to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.
Based on the evidence submitted by the Complainant, the Panel finds the Complainant’s contentions to be true that the disputed domain names were registered and are being used in bad faith within the meaning 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 following seven disputed domain names, <discountfitflops.net>, <fitflopclearancesale.org>, <fitflopsale.org>, <fitflopsingapore.com>, <fitflopsingapore.net>, <fitflopssaleuk.com>, and <sandaliasfitflop.com> be transferred to the Complainant.
Dr. Bernhard F. Meyer
Dated: October 27, 2011