WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alpargatas S.A. and Alpargatas Europe, SLU v. Marko Hartmann, Daniela ZART, JÃrg REIMANN, Barbara KUHN, Singan SÃœNNEN, Kornelia SCHÃ„FER, Tom HOMO, Domingos CUNHA and Michael STONE

Case No. D2021-1822

1. The Parties

The Complainants are Alpargatas S.A, Brazil (“First Complainant”) and Alpargatas Europe, SLU, Spain (“Second Complainant”), represented by PADIMA, Abogados y Agentes de Propiedad Industrial, S.L., Spain.

The Respondents are Marko Hartmann, Germany; Daniela ZART, Germany; JÃrg REIMANN, Germany; Barbara KUHN, Germany; Singan SÃœNNEN, Germany; Kornelia SCHÃ„FER, Germany; Tom HOMO, France; Domingos CUNHA, France; and Michael STONE, United States of America.

2. The Domain Names and Registrars

The disputed domain names <havaianasaustraliasale.com>, <havaianasnederland.net>, <havaianassaldi.com>, <havaianassaleireland.com>, <havaianassalenz.com>, <havaianassaleuk.com>, <havaianasschweiz.com> and <havaianasterlik.com> are registered with NETIM SARL.

The disputed domain name <havaianasbelgie.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2021. On June 10, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 11, 2021, the Registrar NETIM SARL transmitted by email to the Center its verification response disclosing the following registrants and contact information for the disputed domain names <havaianasaustraliasale.com>, <havaianasnederland.net>, <havaianassaldi.com>, <havaianassaleireland.com>, <havaianassalenz.com>, <havaianassaleuk.com>, <havaianasschweiz.com> and <havaianasterlik.com>, which differed from the named Respondents and contact information in the Complaint. On June 11, 2021, the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com also transmitted by email to the Center its verification response disclosing the following registrant and contact information for the disputed domain name <havaianasbelgie.com>,which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on June 11, 2021, providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amended Complaint and provide a consolidation request. The Complainant thereafter filed an amended Complaint including its consolidation arguments on June 16, 2021.

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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on June 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 9, 2021.

The Center appointed William R. Towns as the sole panelist in this matter on July 15, 2021. 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 subsequently determined that the Center’s communication of June 11, 2021 to the Complainant did not include complete registrant and contact information for all of the disputed domain names. The Panel issued Administrative Panel Procedural Order No. 1 on August 3, 2021, directing the Center to issue to the Respondents the Notification of Complainant and Commencement of Administrative Proceeding and Complaint documents, and inviting the Complainant to further amend its consolidation request by August 6, 2021. The Respondents were invited by the Center to participate in and comment on the Complainant’s submission by August 13, 2021, and the due date for the decision was extended to August 18, 2021. The Complainant submitted an amended consolidation request on August 3, 2021. The Respondents did not respond to the Center’s invitation to comment on the Complainant’s submission.

4. Factual Background

The First Complainant Alpargatas S.A was founded in 1907 and headquartered in Sao Paulo, Brazil, and is the owner of the HAVAIANAS trademark. The Second Complainant Alpargatas Europe, SLU is the First Complainant’s exclusive licensee in Europe. The Complainants are both part of the Alpargatas Group, which advertises and sells clothing, footwear, and head gear under the HAVAIANAS brand, and is known for its flip flop sandals, now sold in over 100 countries. The Complainants are hereinafter referred to as the “Complainant”. The Complainant expanded its business into the United States of America (“United States”) and Europe in 2007 and 2008, and presently maintains regional offices in Los Angeles, Madrid, and Hong Kong, China.

The Complainant is the owner of multiple trademark registrations for its HAVAIANAS mark issued by the European Union Intellectual Property Office (“EUIPO”), including the following:

- HAVAIANAS (design and words), European Union Trade Mark (“EUTM”) Reg. No. 003772431, applied for April 29, 2004, and registered September 20, 2005, in Class 25 for clothing, footwear, and headgear;

- HAVAIANAS (word), EUTM Reg. No. 007156128, applied for August 11, 2008, and registered March 23, 2009, in Class 25 for clothing, footwear, and headgear; and

- HAVAIANAS (design and words), EUTM Reg. No. 008664096, applied for November 5, 2009, and registered April 23, 2010, in Class 25 for clothing, footwear, and headgear.

The Complainant is the registrant of the domain name <havaianas-store.com>, via which the Complainant operates its official website.
The disputed domain names were registered by the Respondents on various dates between March 9 and March 18, 2021 (<havaianasaustraliasale.com> on March 10, 2021, <havaianasbelgie.com> on March 18, 2021, <havaianasnederland.net> on March 19, 2021, <havaianassaldi.com> on March 16, 2021, <havaianassaleireland.com> on March 11, 2021, <havaianassalenz.com> on March 11, 2021, <havaianassaleuk.com> on March 9, 2021, <havaianasschweiz.com> on March 15, 2021, and <havaianasterlik.com> on March 15, 2021). The disputed domain names previously have resolved to websites displaying the Complainant’ distinctive HAVAIANAS mark and logo, and purporting to offer HAVAIANAS branded products such as clothing and footwear for sale online. The Respondents have not included on their websites any prominent disclaimer disclosing their lack of relationship with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s HAVAIANAS mark. The Complainant maintains that the disputed domain names reproduce the Complainant’s HAVAIANAS mark and logo in the Respondents’ websites.

The Complainant asserts that the Respondents lack rights or legitimate interests in respect of the disputed domain names. The Complainant represents that the Respondents have not been authorized to register or use the Complainant’s mark in the disputed domain names, and asserts that the Respondents are using the disputed domain names with websites that prominently display the Complainant’s HAVAIANAS mark and logo to create confusion among Internet users seeking the Complainant’s flip flops, related clothing, and eye glasses. The Complainant contends that the Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services and are not making a legitimate noncommercial or other fair use of the disputed domain names. According to the Complainant, there is no evidence that the Respondents have been commonly known by any of the disputed domain names.

The Complainant maintains that the Respondents registered and are using the disputed domain name in bad faith. The Complainant submits that the HAVAIANAS mark is known worldwide, and asserts that the Respondents would have been aware of the Complainant’s HAVAIANAS mark when registering the disputed domain names. The Complainant reiterates that the disputed domain names resolve to commercial websites where the Complainant’s branded HAVAIANAS items are being sold without any disclaimer disclosing their lack of relationship with the Complainant.

The Complainant submits that the Respondents are acting in bad faith and have sought to capitalize on the reputation of the Complainant’s HAVAIANAS mark, diverting Internet users seeking the Complainant’s products to the Respondents’ websites, and intentionally creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of its websites and the goods offered or sold thereon. The Complainant requests that the disputed domain names be cancelled.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents

Consolidation of multiple registrants as respondents in a single administrative proceeding is appropriate under the Policy and Rules where the domain names or the websites to which they resolve are subject to common control, and consolidation would be procedurally efficient, fair, and equitable to all parties. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”.

The facts in the instant record strongly suggest that the disputed domain names are subject to common control. All of the disputed domain names were registered on various dates between March 9 and 18, 2021, and all but one of the nine disputed domain names were registered to a single registrar. The administrative, technical, and contact information are identical for eight of the disputed domain names, and all of the disputed domain names use the email account “@yeah.net”. The Complainant’s HAVAIANAS mark is the dominant feature in all of the disputed domain names. And as previously noted, all of the disputed domain names have been used with essentially identical websites prominently displaying the Complainant’s HAVAIANAS mark and logo, and purporting to offer for sale genuine HAVAIANAS branded products.

In light of the foregoing factors, the Panel considers that the disputed domain names in all likelihood were registered by a single individual, but even assuming multiple registrants the Panel nonetheless concludes for the reasons discussed above that the disputed domain names are subject to common control. Taking into account identifiable commonalities in the registrations, the use of multiple disputed domain names directly affecting the Complainant’s rights, and finding that common questions of law and fact are predominant, the Panel concludes that consolidation would be procedurally efficient, and fair and equitable to all parties. The Panel accordingly will proceed to a decision on the merits.

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the HAVAIANAS mark, in which the Complainant has demonstrated rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

The Complainant’s HAVAIANAS mark is clearly recognizable in all of the disputed domain names.² The first element test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.³ Applying this comparison, the Complainant’s mark is recognizable. The inclusion in the disputed domain names of geographical, meaningless, or descriptive words such as “sale” – for example, “saleireland”, “australiasale”, “salenz”, and “saleuk” (emphasis added) – does not prevent a finding of the confusing similarity between the disputed domain names and the Complainant’s mark.⁴ When at least a dominant feature of the relevant trademark is recognizable in the disputed domain names, the domain names will normally be considered confusingly similar to that mark for purposes of UDRP standing.⁵ See Autodesk, Inc. v. Brian Byrne, meshIP, LLC, WIPO Case No. D2017-0191 (addition in disputed domain names <autocadcloud.com> and <hostedautocad.com> of descriptive words “cloud” and “hosted” does not prevent confusing similarity). See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524.

Top-Level Domains (“TLDs”), in this case “.com” and “.net”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.⁶

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondents have not been authorized to use the Complainant’s HAVAIANAS mark. Regardless, the Respondents have registered multiple disputed domain names appropriating the Complainant’s distinctive HAVAIANAS mark, and have pointed the disputed domain names to websites prominently displaying the Complainant’s HAVAIANAS mark and logo, purporting to be offering for sale online the Complainant’s branded HAVAIANAS products. Insofar as the record reflects, the Respondents have not included on their websites any disclaimer disclosing their lack of relationship with the Complainant.

Pursuant to paragraph 4(c) of the Policy, the Respondents may establish rights or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondents has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or

(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondents have not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents’ registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.

It is evident to the Panel that the Respondents were aware of the Complainant and had the Complainant’s HAVAIANAS mark in mind when registering the disputed domain names, each of which is confusingly similar to the Complainant’s mark. To the extent the Respondents might claim to be making a fair use of the disputed domain names, any reliance by the Respondents on decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter “ Oki Data”) would be misplaced. Fundamentally, a respondent’s use of a domain name would not be considered “fair” if it falsely suggests affiliation with the trademark owner. UDPR panels generally have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. See WIPO Overview 3.0, sections 2.5 and 2.5.1. And the use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, WIPO Case No. D2014-1359; Project Management Institute v. CMN.com, WIPO Case No. D2013-2035.

In the seminal Oki Data decision, the respondent was a reseller of the complainant’s OKIDATA-branded products, and registered the domain name <okidataparts.com>. The panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied: (1) the respondent must actually be offering the goods or services at issue; (2) the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); (3) the site itself must accurately disclose the respondent’s relationship with the trademark owner; and (4) the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name. Id.

The Respondents’ registration of nine disputed domain names appropriating the Complainant’s HAVAIANAS mark in its entirety strongly suggests to the Panel an attempt by the Respondents to “corner the market” in the relevant disputed domain names, depriving the Complainant of the ability of reflect its own mark in the disputed domain names. Moreover, and of potentially greater significance, the Respondents insofar as the record reflects has made no effort whatsoever to accurately disclose their relationship if any to the Complainant. The Panel considers that Internet users seeking the Complainant’s website but arriving instead at one or more of the Respondents’ websites (to which the multiple disputed domain names resolve) more likely than not would anticipate that the websites they have arrived at are affiliated with, endorsed or otherwise sponsored by the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.

Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondents, the Panel finds that the Respondents have neither used nor made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. See Autodesk, Inc. v. Brian Byrne, meshIP, LLC, WIPO Case No. D2017-0191. Further, and for the reasons discussed above, the Panel holds that the Respondents have not made a legitimate noncommercial or fair use of the disputed domain names. As previously noted, the Respondents have not been authorized to use the Complainant’s HAVAIANAS mark, and the Panel has found no indication in the record that the Respondents have been commonly known by any of the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondents of rights or legitimate interests in the disputed domain names.

Furthermore, the Panel finds that the nature of the disputed domain names, comprising the Complainant’s HAVAIANAS mark in its entirety in combination with additional terms, carries a risk of implied affiliation and cannot constitute a fair use as they effectively impersonate or suggest sponsorship or endorsement by the Complainant.⁷

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents’ conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iv) of the Policy. The record is convincing that the Respondents had the Complainant’s HAVAIANAS mark firmly in mind when registering the disputed domain names. The Respondents’ registration and use of multiple domain names appropriating the Complainant’s HAVAIANAS mark as set forth above clearly is demonstrative of bad faith in the attendant circumstances of this case. The Respondents have sought to capitalize on the Complainant’s trademark rights, using the disputed domain names to create a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondents’ websites and the products or services offered thereon.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. Decision

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, <havaianasaustraliasale.com>, <havaianasbelgie.com>, <havaianasnederland.net>, <havaianassaldi.com>, <havaianassaleireland.com>, <havaianassalenz.com>, <havaianassaleuk.com>, <havaianasschweiz.com>, and <havaianasterlik.com>, be cancelled.

William R. Towns
Sole Panelist
Date: August 18, 2021

¹ See WIPO Overview 3.0, section 1.7.

² Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.

³ Id.

⁴ See WIPO Overview 3.0, section 1.8 and cases cited therein. The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy.

⁵ See WIPO Overview 3.0, section 1.7 and cases cited therein.

⁶ See WIPO Overview 3.0, section 1.11.2 and cases cited therein.

⁷ See WIPO Overview 3.0, section 2.5.1 and cases cited therein.