WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vibram S.p.A. v. Oscar Lee

Case No. D2010-1051

1. The Parties

The Complainant is Vibram S.p.A. of Varese, Italy, represented by Avvocati Associati Feltrinelli & Brogi, Italy.

The Respondent is Oscar Lee of Haerbin, the People’s Republic of China.

2. The Domain Names and Registrar

The disputed domain names <fivefingerssale.com>, <five-fingers-vibram.com> and <vibram5fingersshoes.com> (“Disputed Domain Names”) are registered with HiChina Zhicheng Technology Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2010. On June 24, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Names. On June 25, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 29, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On June 30, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. 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 July 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2010.

The Center appointed Kar Liang Soh has the sole panelist in this matter on July 29, 2010. 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 has been in the business of high performance rubber soles for the outdoor, work, recreation, fashion, repair and orthopaedic markets for the last 70 years. The Complainant is headquartered in Italy and operates in over 120 countries. The Complainant also has production centers in New York, United States and Guangdong, China.

The word “vibram” is a key part of the Complainant’s name. One of the Complainant’s range of products is marketed under the trade mark FIVEFINGERS. Searches on major Internet search engines (e.g. Google, Yahoo) produce hits that associate “FiveFingers” with the Complainant.

The Complainant owns trade mark registrations for the words “vibram” and “fivefingers” including the following:

The Complainant also operates websites at the domain names <vibram.com> and <vibramfivefingers.com> at which the Complainant market goods under the trade marks VIBRAM and FIVEFINGERS. When the Panel visited the Complainant’s website at “www.vibramfivefingers.com” to verify the Complainant’s information, it was noted that a user is offered a selection of different parts of the world which would direct the user to another website at “www.vibramfivefingers.cn” if China is selected. Among the Complainant’s products are footwear moulded into the shape of feet with distinct toes.

The Disputed Domain Names were all registered on April 4, 2010, some years after the Complainant’s trade mark registrations. Each Disputed Domain Name resolves to a website at which purports to offer “Vibram FiveFingers” footwear moulded into the shape of feet with distinct toes for sale via an online shopping cart facility. The trade marks VIBRAM and FIVEGINGERS are used throughout the website. No other information about the Respondent is available beyond the WhoIs information for the Disputed Domain Names and the websites resolved therefrom.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

1) The Disputed Domain Names are confusingly similar to the Complainant’s trade marks. The differences between the Disputed Domain Names and the Complainant’s trade marks are negligible;

2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Disputed Domain Names do not correspond to the Respondent’s name and the Respondent’s name is not commonly known by the Disputed Domain Names. The Complainant has never licensed, authorised or otherwise permitted the Respondent to register and use the Disputed Domain Names or the trade marks VIBRAM and FIVEFINGERS. There is no relationship between the Complainant and the Respondent.

3) The Disputed Domain Names were registered and are being used in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with the Complainant’s trade marks and official website at “www.vibramfivefingers.com” as to source, sponsorship, affiliation or endorsement. The Respondent must have known of the Complainant’s trade marks before he registered the Disputed Domain Names.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

The default language of the proceeding should be Chinese because the registration agreement is in Chinese. However, pursuant to paragraph 11(a) of the Rules, the Panel hereby determines that English shall be the language of the proceeding having regard to fairness to the parties and procedural efficiency and expedition. The following factors influenced the Panel in coming to this decision:

(1) The Complainant has requested that English be the language of the proceeding;

(2) The Respondent’s websites under the Disputed Domain Names are exclusively in fluent English. No Chinese is used on the websites;

(3) The Complaint is submitted in English. It would be time-consuming and cost-intensive to require the Complainant to provide a Chinese translation of the Complaint;

(4) The Respondent did not contest the language of the proceeding although he was given an opportunity to comment on the Complainant’s request that English be the language of the proceeding;

(5) All of the Center’s communications have been transmitted to the Parties in English and Chinese; and

(6) It serves no discernible purpose or benefit to adopt Chinese as the language of the proceeding.

6.2 Discussion

Paragraph 4(a) of the Policy requires the following to be established in order for the Complainant to succeed in this proceeding:

(1) The Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(3) The Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant’s trade mark registrations for VIBRAM and FIVEFINGERS establish the Complainant’s trade mark rights. It should be noted from the Complainant’s websites and domain names that the Complainant uses a composite of the trade marks VIBRAM and FIVEFINGERS in addition to using these trade marks separately.

The Disputed Domain Name <fivefingerssale.com> incorporates the entirety of the Complainant’s trade mark FIVEFINGERS. The only difference between this Disputed Domain Name and the trade mark FIVEFINGERS is the suffix “sale” which is clearly non-distinctive. A domain name which incorporates a trade mark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is regarded by many past panels to be confusingly similar to the trade mark (e.g., Vibram S.p.A. v. Peng Zhen, WIPO Case No. D2010-0952; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144). The Panel does not see any reason to depart from this established principle. Therefore, <fivefingerssale.com> is found to be confusingly similar to the Complainant’s trade mark FIVEFINGERS.

The Disputed Domain Name <five-fingers-vibram.com> incorporates the entirety of the Complainant’s trade marks FIVEFINGERS and VIBRAM. The only difference between them are the hyphens between the words “five”, “fingers” and “vibram” in the Disputed Domain Name. A domain name which incorporates two trade marks of a complainant is by extension of this principle also confusingly similar to the two trade marks (see Vibram S.p.A. v. Peng Zhen, supra; Intuit Inc. v. xiejian, WIPO Case No. D2010-1006). The hyphens do not add any feature to the Disputed Domain Name that assist in distinguishing it from the Complainant’s trade marks. The Panel finds <five-fingers-vibram.com> to be confusingly similar to the Complainant’s trade marks FIVEFINGERS and VIBRAM.

The Disputed Domain Name <vibram5fingersshoes.com> incorporates the entirety of the Complainant’s trade mark VIBRAM. It also incorporates the character combination “5fingers” which clearly corresponds to the Complainant’s trade mark FIVEFINGERS. “5fingers” and FIVEFINGERS are phonetically identical and confusingly similar words. Preceding the word “5fingers” with the word “vibram” which is another trade mark of the Complainant heightens the association of the resulting word with the Complainant. In the circumstances the only real difference between <vibram5fingersshoes.com> and the Complainant’s trade marks is the suffix “shoes”. The Complainant’s trade marks relate to shoes. The Respondent’s website resolved from <vibram5fingersshoes.com> offers shoes for sale. The suffix “shoes” is clearly descriptive and non-distinctive and fails to prevent the Disputed Domain Name from being confusingly similar to the Complainant’s trade marks.

The first limb of paragraph 4(a) is accordingly satisfied for all the Disputed Domain Names.

B. Rights or Legitimate Interests

The consensus view developed by past panels is that a complainant needs only show a prima facie case that a respondent does not have rights or legitimate interests in a disputed domain name and the burden shifts to the respondent to rebut the same.

It has already been established that the Complainant is the owner of rights in the trade marks VIBRAM and FIVEFINGERS. The Complainant has also confirmed that it did not grant the Respondent any rights to register or use the Disputed Domain Names. The Respondent is offering shoes for sale under the VIBRAM and FIVEFINGERS trade marks. Regardless of whether such shoes are genuine or counterfeit, the right to resell products under a trade mark does not automatically amount to any authorization to use the trade mark as the basis for a domain name (see Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna,

WIPO Case No. D2010-0988; Vibram S.p.A. v. Chen yanbing, WIPO Case No. D2010-0981).

Further, in the absence of any explanation, the Panel cannot accept that the adoption of the trade marks VIBRAM and FIVEFINGERS on the Respondent’s website in association with unusual footwear that are moulded with distinct toes in the same style as the Complainant’s to be mere coincidence. The Respondent is also not commonly known by the Disputed Domain Names. It is fair to conclude that the Respondent is well aware of the Complainant and the Complainant’s trade marks and must have consciously and deliberately adopted the Complainant’s trade marks.

In the circumstances, the Panel concludes prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Names. Since no Response was filed, the second limb of paragraph 4(a) is established.

C. Registered and Used in Bad Faith

The trade marks VIBRAM and FIVEFINGERS have been held to be well-known by past panels (Vibram S.p.A. v. Peng Zhen , supra; Vibram S.p.A. v. Chen yanbing, supra). Based on the evidence submitted, this Panel agrees that the trade marks VIBRAM and FIVEFINGERS are prima facie well-known.

Having found that the Respondent consciously and deliberately adopted the Complainant’s trade marks VIBRAM and FIVEFINGERS, the conclusion that the Respondent has a deliberate intent to associate with the Complainant’s trade marks is inevitable. The use of the Disputed Domain Names exemplifies the opportunistic bad faith registration and use discussed in past panel decisions (eg, Vibram S.p.A. v. Peng Zhen , supra; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, supra, etc.). Such use takes unfair advantage of the reputation in the Complainant’s trade marks.

In particular, it is evident that the Respondent is using the websites resolved from the Disputed Domain Names to attract Internet users, by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or of products on the websites. The online sales facilities offered on these websites can only be targeted at commercial gain. The facts read squarely on the example of bad faith registration and use illustrated by paragraph 4(b)(iv) of the Policy.

In the circumstances, the Panel determines that the third limb of paragraph 4(a) is also established.

7. Decision

For all 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 <vibram5fingersshoes.com>, <fivefingerssale.com> and <five-fingers-vibram.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Dated: August 12, 2010