WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JIBBITZ, LLC v. Roger Lau
Case No. D2012-0966
1. The Parties
The Complainant is JIBBITZ, LLC of Boulder, Colorado, United States of America (“United States”), represented by Beijing Jieding IP Agency Co., Ltd., China.
The Respondent is Roger Lau, of Jinmei Fuqiao, Quanzhou, China.
2. The Domain Name and Registrar
The disputed domain name <jibbitzai.com> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2012. On May 8, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On May 8, 2012, eNom 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 May 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2012.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on June 5, 2012. 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 JIBBITZ LLC, was incorporated in the year 2005 to create decorative charms for the holes in “Crocs” sandals. The Complainant later was acquired by Crocs Inc. (December 2006) and JIBBITZ became a brand of Crocs Inc. The Complainant makes charms for children’s shoes to personalize their Crocs shoes and accessory items.
The Complainant is the owner in China, the United States and other countries of the trademark JIBBITZ. The Complainant holds, among others, the following JIBBITZ trademarks in China:
(i) No. G899247 JIBBITZ trademark (word), registered on September 12, 2006 Class 26
(ii) No. G899248 JIBBITZ trademark (design & word), registered on September 13, 2006 Class 26
(iii) No. G901718 JIBBITZ trademark (design & word), registered on September 13, 2006 Class 26
(iv) No. G900654 JIBBITZ trademark (word), which was registered on October 17, 2006 Class 26
The above JIBBITZ trademarks were all registered before the registration date of the Domain Name i.e. March 17, 2010.
The Complainant also registered the domain name <jibbitz.com> on July 9, 2005.
5. Parties’ Contentions
The Complainant claims that:
1) The Domain Name is confusingly similar to the JIBBITZ trademark because JIBBITZ is the only distinctive component of the Domain Name. The addition of the generic word “ai” (“love” in Chinese) is insufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s highly distinctive JIBBITZ mark.
2) The Domain Name, which incorporates the JIBBITZ trademark, can cause confusion among Internet users and may lead them to believe that the Respondent enjoys some form of sponsorship by or affiliation with the Complainant and its JIBBITZ mark.
3) The Respondent holds no JIBBITZ trademarks and is not affiliated with the Complainant. The Complainant, being the trademark holder, has never authorized, licensed or permitted the
Respondent to use its JIBBITZ trademark or register it as a domain name.
4) The use of the Domain Name by the Respondent does not constitute a bona fide offering of goods or services. The acts of the Respondent do not satisfy the requirements of bona fide use provided for in the Policy and the Respondent’s sales of apparently counterfeit JIBBITZ charms preclude a bona fide offering of goods and/or services.
5) The Respondent has no rights or legitimate interests in the Domain Name.
6) The Respondent has never been known by the Domain Name.
7) The Respondent’s registration and use of the Domain Name in an attempt to capitalize on the fame and commercial reputation of the JIBBITZ trademark and to exploit the marketing efforts expended by the Complainant in order to create and maintain the image of the mark, cannot be deemed as bona fide use.
8) Use of the Domain Name by the Respondent began long after the JIBBITZ mark became known among the related public, therefore, Respondent should have been aware of the Complainant and its JIBBITZ mark. The Respondent’s use of a domain name that incorporates JIBBITZ indirectly indicates that he knew of both the Complainant and JIBBITZ charms at the time the Domain Name was registered.
9) Furthermore, the website to which the Domain Name resolves contains the images of the Complainant’s JIBBITZ trademark and is offering for sale apparently counterfeit JIBBITZ charms. It is therefore inconceivable that Respondent was not aware of the JIBBITZ trademark at the time of the registration of the Domain Name. Instead, this sufficiently suggests an intention to take advantage of the JIBBITZ mark by the Respondent for its own commercial advantage.
10) The Respondent has no justifiable grounds on which to incorporate JIBBITZ in the Domain Name. JIBBITZ is a coined word that is known merely as an identifier of the Complainant’s trademark and charms for shoes and no plausible explanation exists for the Respondent’s selection of the JIBBITZ trademark as part of the Domain Name other than to benefit from the fame of the JIBBITZ trademark. Incorporation of the JIBBITZ mark in the Domain Name without any reasonable justification is sufficiently strong evidence of bad faith by the Respondent
11) The Respondent knew of the Complainant and its JIBBITZ trademark at the time of registering the Domain Name, but intended to use the Complainant’s famous names and trademarks to cause confusion as to sponsorship by the Complainant or affiliation with the Complainant’s website. The Respondent has registered and is using the Domain Name without authorization, whilst being aware of the Complainant’s trademark JIBBITZ, which constitutes an act of bad faith.
12) The selection and use of JIBBITZ as part of the Domain Name by the Respondent is to intentionally seek to create confusion as to the Complainant’s sponsorship by or affiliation with the Respondent’s website in order to drive Internet traffic to its own website to purchase its goods and/or services.
13) The use of the Domain Name for a commercial website where the Complainant’s JIBBITZ trademark is prominently used, suggests that the purpose of the Respondent of registering the Domain Name is to trade off the fame of the Complainant’s JIBBITZ mark, in order to drive Internet users who are seeking products under JIBBITZ mark to its own website for commercial gain, intentionally creating a likelihood of confusion with the Complainant's mark.
14) By clicking the “Our clogs” or “Our garment” links in the homepage of the website associated with the Domain Name, Internet visitors are redirected respectively to the website “www.yeshoe.com” or “www.anpolo.com”. A company named PIMPA (FUJIAN) CLOTHES CO., LTD is disclosed in ” “www.anpolo.com” website, the residential address of which is the same as that of the Respondent as shown in the website associated with the Domain Name. PIMPA (FUJIAN) CLOTHES CO., LTD is offering for sale products including boxer shorts, T-shirts and underwear.
15) The Respondent is offering for sale what appears to be JIBBITZ branded charms and presents itself as “Jibbitz China Supplier”, which is contrary to the facts. The Complainant has never authorized or licensed the Respondent, or PIMPA (FUJIAN) CLOTHES CO., LTD, to manufacture or distribute its JIBBITZ charms in China. The JIBBITZ charms manufactured and/or distributed by the Respondent and PIMPA (FUJIAN) CLOTHES CO., LTD are apparently counterfeit. Using a domain name to facilitate the sale of counterfeit goods is strong evidence of bad faith.
The Complainant requests that the Panel issue a decision that the Domain Name <jibbitzai.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has established that it has rights in the JIBBITZ trademark and has stated that the Domain Name is confusingly similar to it.
In order to substantiate this claim, the Complainant has argued that JIBBITZ is the only distinctive part of the Domain Name and that the addition of the term “ai” to the JIBBITZ trademark does not avoid the confusing similarity between the Domain Name and the Complainant’s mark.
This Panel agrees with the Complainant’s contention that JIBBITZ is the only distinctive part. Moreover, it is now well established by many previous UDRP decisions that the addition of a generic term (in this case the term “ai” that means “love” in Chinese) to a trademark is generally not sufficient to avoid confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
A. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish rights or legitimate interests in a domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
i) that before any notice to the respondent of the dispute, the respondent used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii) that the respondent is commonly known by the domain name, even if the respondent has not acquired any trademark rights; or
iii) that the respondent intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
This Panel finds that here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known by the name “Jibbitz” or by a similar name, and has not alleged any facts to justify any rights or legitimate interests in the Domain Name. The Respondent does not appear to make any legitimate use of the Domain Name for noncommercial activities. Finally, the Respondent has not replied to the Complaint, proving or at least alleging in any other way any rights or legitimate interests in the Domain Name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
B. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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:
i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the 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 the respondent has engaged in a pattern of such conduct; or
iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online 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.
Accordingly, for a complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
Considering the Complainant’s trademark registrations, the use and promotion on the Internet on the one hand, and on the other, the Respondent’s use of the Domain Name, the non-contested claims: a) that the Respondent is apparently offering for sale Jibbitz branded charms; b) that the Respondent presents itself as “Jibbitz China Supplier” and; c) that the Respondent is using the Domain Name to facilitate the sale of apparently counterfeit goods; and in the absence of contrary evidence, the Panel finds that:
1) the Respondent knew of the Complainant’s trademarks, products and services and intentionally intended to create an association with the Complainant and its business.
2) that the Respondent, as shown by the contents displayed on its website at the Domain Name, must have had actual knowledge of the Complainant’s trademark at the time of the registration of the Domain Name;
3) that the above described use of the Domain Name, i.e., to divert Internet traffic to the Respondent’s website supports an inference of bad faith registration and use of the Domain Name;
4) the fact that the Respondent is offering for sale Jibbitz branded charms and presents itself as “Jibbitz China Supplier”, while not being authorized by the Complainant, is also inference of bad faith registration and use of the Domain Name.
Accordingly, the Panel finds on the basis of the evidence presented that the Complainant has satisfied 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 <jibbitzai.com> be transferred to the Complainant.
Dated: June 12, 2012