WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Iguasu Trading USA, Inc. v. Thomas Meyer, Brandzbase GmbH, Brand Group 11 GmbH and Sevim Hussain
Case No. D2012-1930
1. The Parties
The Complainant is Iguasu Trading USA, Inc. of Los Angeles, United States of America, represented by Venable, LLP, United States of America.
The Respondents are Thomas Meyer, of Oberhausen, Germany; Brandzbase GmbH, of,Oberhausen, Germany; Brand Group 11 GmbH, of Neuss, Germany; and Sevim Hussain, of Neuss, Germany.
2. The Domain Names and Registrar
The disputed domain names <vlado-footwear.com> and <vlado-shop.com> (the "Disputed Domain Names") are registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 29, 2012. On October 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 1, 2012 and on October 4, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondents and contact information in the Complaint. In response to a notification by the Center on October 8, 2012 that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 13, 2012.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on October 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 5, 2012.
The Center appointed Mr. Andrea Mondini as the sole panelist in this matter on November 20, 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 is Iguasu Trading USA, Inc., a corporation organized under the laws of California, United States. The Complainant offers footwear and apparel under the trademark VLADO since January 1, 2002. The Complainant owns and runs the website “www.vladofootwear.com” to sell and promote its products.
The Complainant has obtained the following registrations with the United States Patent and Trademark Office for trademarks in the class 25 which includes footwear:
a) VLADO (United States Reg. No. 3,229,327) registered April 17, 2007, with first use dating back to January 1, 2002;
b) VLADO & Design (United States Reg. No. 3,236,535) registered May 1, 2007, with first use dating back to January 1, 2002;
c) A logo of an image of a rampant lion (United States Reg. No. 3,818,117) registered July 13, 2010, with first use dating back to December 31, 2008.
Furthermore, on November 18, 2010, the Complainant obtained an international registration (IR No. 1059 673) for the trademark VLADO in the European Community and the Republic of Korea, among others, claiming clothing including footwear. On April 12, 2010 the trademark VLADO was registered in Canada (TMA763889), also in connection with clothing and footwear.
The Respondents registered the Disputed Domain Name <vlado-shop.com> on June 5, 2011 and the Disputed Domain Name <vlado-footwear.com>.com on August 12, 2011. As the Respondents did not file a response, no further information is known about the Respondents.
5. Parties’ Contentions
The Complainant states that it manufactures, promotes, distributes and sells unique footwear under the trademark VLADO since January 1, 2002 and owns and runs the website “www.vladofootwear.com” since December 13, 2003. The Complainant states that the trademark is fanciful as it bears no relationship to the goods that the Complainant sells under the trademark. Furthermore, the Complainant points out that it has registered the trademark in several countries all over the world. The Complainant argues, therefore, that the trademark VLADO would be strong and well-known.
The Complainant states that the Disputed Domain Names are nearly identical and confusingly similar to the Complainant's trademark VLADO. The Complainant asserts this claim by showing that the eight factors in the determination of a likelihood of confusion developed by the United States Court of Appeals for the Ninth Circuit in the case of AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) are met. In particular the Complainant argues that:
a) The Disputed Domain Names <vlado-shop.com> and <vlado-footwear.com> are substantially identical to the VLADO trademark as they consist of the full trademark together with the generic terms "shop" and "footwear";
b) The parties' goods are substantially identical;
c) The parties use similar channels for promotion and marketing;
d) The VLADO trademark is distinctive as it is arbitrary and fanciful;
e) The use of both of the Disputed Domain Names caused actual confusion;
f) Based on the degree of care exercised by the purchasers consumers are likely to be confused;
g) The Respondents did not innocently select the Disputed Domain Names; and
h) The Respondents will continue to compete with the Complainant.
The Complainant further states that the Respondents have no rights or legitimate interest in the Disputed Domain Names. Besides selling footwear to Respondents between March 2011 and October 2011, the Complainant asserts that it has not given any right to register the Disputed Domain Names or use the VLADO trademark nor is the Complainant in any way affiliated with the Respondents.
Moreover, the Complainant points out that the Respondents sold identical copies of the Complainant's footwear and that such infringement is subject of a preliminary injunction against one of the Respondents granted on August 17, 2012 by the High Court of Hamburg, Germany. The Complainant also believes that the Respondents subject to the preliminary injunction transferred the Disputed Domain Names to the second Respondent in order to hinder and delay the proceedings in front of the High Court of Hamburg.
Lastly, the Complainant states that the Respondents have registered and are using the Disputed Domain Names in bad faith. The Complainant argues that the Respondents had actual knowledge of the VLADO trademark when registered the Disputed Domain Names and used the websites resolving under the Disputed Domain Names to disrupt the Complainant's business and divert attention from the Complainant’s website to Respondents’ website. According to the Complainant, the Respondents use the VLADO trademark and the Complainant's logo on their websites to confuse the public about the source of the website. In the view of the Complainant all these aforementioned acts are done for commercial gain.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Respondent Identity
The Complainant argues and provides evidence of the common control of the disputed domain names by Thomas Meyer, Brandzbase GmbH, Brand Group 11 GmbH and Sevim Hussain. Accordingly, the Panel finds their inclusion in these proceedings as Respondents is proper.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant owns rights in the trademark for VLADO in the United States, in the European Union and further jurisdictions and provided evidence of its ownership thereof.
Both of the Disputed Domain Names incorporate the VLADO trademark. The Panel finds that the trademark VLADO is the dominant element in the Disputed Domain Names and the addition of the generic and descriptive terms "shop" and "footwear" does not avoid the confusing similarity of the Disputed Domain Names with the trademark VLADO. The Panel thus finds that the Complainant established that both of the Disputed Domain Names are confusingly similar to the trademark VLADO.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondents have no rights or legitimate interests in respect of the disputed domain names.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the potentially impossible task of proving a negative proposition. Such a proof requires information that is primarily within the knowledge of the Respondents. Therefore, the common view is that paragraph 4(c) of the Policy shifts the burden of proof to the Respondents to come forward with evidence of a right or legitimate interest in the Disputed Domain Names. However, the Complainant has to make a prima facie showing indicating the absence of such rights or interests. See, e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant made a prima facie case that the Respondents are not affiliated with the Complainant and that they have not been commonly known by the Disputed Domain Names. The Complainant establishes furthermore, that Respondents have sold identical copies of the Complainants' products and that this infringement is the subject of a preliminary injunction granted by a German court on August 12, 2012. Therefore, this Panel finds that by creating confusion as to the source and affiliation with the Complainant as well as by infringing the Complainant's intellectual property rights, Respondents are not making a bona fide offering of goods. The Complainant also convincingly shows that the Respondents did not make legitimate noncommercial or fair use of the Disputed Domain Names.
The Respondents had the opportunity to demonstrate that it has rights or legitimate interests in the Disputed Domain Names, but they failed to do so. Consequently, the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Names.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondents registered and subsequently used the Disputed Domain Names in bad faith. Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith.
The website under the Disputed Domain Name <vlado-footwear.com> welcomes visitors in a manner that evokes the impression of being the official representation of the VLADO trademark in Europe. The website under the Disputed Domain Name <vlado-shop.com> also evokes the impression of being affiliated with and endorsed by the trademark VLADO. The appearance of both websites is therefore likely to give rise to confusion with the Complainant's trademark VLADO as to the source, sponsorship, affiliation, or endorsement. It is also clear that the Respondents are using the Disputed Domain Names for commercial gain, in a manner consistent with paragraph 4(b)(iv) of the Policy.
Finally, the Disputed Domain Names are likely to disrupt the Complainant's business by diverting consumers away from the Complainant's website.
Accordingly, the Panel finds that the Disputed Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, <vlado-footwear.com> and <vlado-shop.com>, be transferred to the Complainant.
Date: December 4, 2012