WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FitFlop Limited v. Ren Xiaoqing

Case No. D2011-0960

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 Ren Xiaoqing of Putian, Xiuyu, China.

2. The Domain Names and Registrar

The disputed Domain Names <fitflopclearance.com> and <fitflopsonsale.org> (hereinafter collectively referred to as: the "Domain Names") are registered with Name.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2011. On June 7, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the Domain Names. On June 7, 2011, Name.com LLC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the details for the administrative, billing, and technical contact.

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 June 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2011.

The Center appointed Hugues G. Richard as the sole panelist in this matter on July 21, 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 (50) countries under the FITFLOP and FITFLOPS marks (hereinafter collectively referred to as: the "FITFLOP trademark"). Accordingly, every product manufactured and sold by Complainant bears the FITFLOP trademark. The FITFLOP trademark is protected in more than fifty (50) countries, and the Complainant owns approximately twenty-seven (27) trademark registrations for the FITFLOP trademark around the world:

The FITFLOP trademark has been available in the United States since 2007, approximately four years before March 19, 2011, the date on which the Respondent registered the Domain Names with Name.com LLC. Further to this, Name.com LLC confirmed on June 7, 2011 that the Respondent is indeed the registrant of the 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 individual based in China that has never had any relationship with the Complainant. The Respondent does not have any license, permission or authorization from the Complainant to use or register the Domain Names and the Respondent is not and has never been an authorized seller of any FITFLOP products. Furthermore, the Complainant does not sell any of its products to the Respondent.

The Domain Names are being used in connection with websites that sell and offer to sell unauthorized or counterfeit FITFLOP-branded merchandise. The websites associated with the Domain Names mimic the design and layout of Complainant’s official “www.fitflops.com” website. Respondent also uses or has used the FITFLOP mark on each page of his websites.

No disclaimer is present on any of the Respondent’s websites that would indicate to consumers that the Respondent is not affiliated with the Complainant, or that the Respondent is using the Complainant’s FLIPFLOP trademark without permission or that the Respondent and his affiliated websites are not authorized to sell the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it possesses rights in the FITFLOP trademark.

The Complainant contends that the Domain Names registered by the Respondent are identical or confusingly similar to its well-known FITFLOP trademark, and to its popular and registered <fitflop.com> domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Names.

The Complainant contends that the Respondent registered and used the Domain Names in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to contest the Complainant’s assertions, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

The Panel finds that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

While the Panel may draw negative inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed: see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

Essentially, even if the Respondent provided no reply, paragraph 4(a) of the Policy states that in order to succeed, the Complainant must establish each of the following elements:

(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.

A. Identical or Confusingly Similar

The Complainant provided evidence that its FITFLOP trademark is a well-known footwear brand; it noted that its official website attracts hundreds of thousands of visitors per year from around the world, that its FLIPFLOP trademark has received a great deal of press coverage by news outlets such as Newsweek and THETIME.CO.UK, and that is has been recommended by media personality Oprah Winfrey and the high-fashion website NET-A-PORTER.

Based on the evidence adduced by the Complainant, as noted above, this Panel has no hesitation in finding that the Complainant’s FITFLOP trademark is a well-known trademark. Indeed, the Panel finds that the Complainant has strong rights in the FITFLOP mark based on its use of FITFLOP in and as part of a trademark since 2007, its use of the mark on footwear products sold throughout the world, its web presence at “www.fitflop.com” since 2007, and its twenty-seven (27) international trademark registrations. See Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126 (finding strong rights in CHANEL mark based on registration and use); see also Microsoft Corp. v. Burkes, NAF Claim No.652743 (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO”).

The FITFLOP trademark is distinctive, is registered in a large number of jurisdictions throughout the world, and is widely known. The Domain Names incorporate such a trademark in its entirety. It is established case law that where a domain name incorporates complainant’s registered mark, 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; see also AT&T Corp. v. Gormally, WIPO Case No. D2005-0758 (“the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark”); see also Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615 (domain name that wholly incorporates registered trademark establishes confusing similarity).

Furthermore, the words “clearance” and “on sale” are generic. When a respondent merely adds generic or descriptive terms to an otherwise distinctive and widely known trademark, the domain name should be considered confusingly similar to the registered trademark. See Volvo Trademark Holding AB v. Uvelov, WIPO Case No. D2002-0521 (including a generic term with a famous mark aggravates rather than diminishes the likelihood of confusion); see also Bayer Aktiengesellschaft v. Henrik Monseen, WIPO Case No. D2003-0275; Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. 2002-0363; Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253.

In the opinion of the Panel, Internet users seeing the Domain Names would conclude that they were owned by, or associated with the Complainant, and further, that they were associated with the products offered by the Complainant under the FITFLOP trademark and through its website at <www.fitflop.com>. The Panel accordingly finds that the 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.

B. Rights or Legitimate Interests

As several panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the Domain Names. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, NAF Claim No. 741828 (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP paragraph 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

The Respondent has not filed any response in this proceeding, therefore, the Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the Domain Names. See Apple Inc. v. Algernon Salois WIPO Case No. D2011-0413 (“In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent that it has no rights or legitimate interests”).

The undisputed evidence is that the Respondent registered the Domain Names long after the Complainant established its rights in the FITFLOP trademark. The Panel is prepared to infer that the Respondent knew of the Complainant’s business and was aware of the Complainant’s rights in the FITFLOP trademark when the Respondent registered the Domain Names in 2011 with Name.com LLC.

It is also clear to the Panel that the Complainant is in no way associated or affiliated with the Respondent nor is there any relationship between the Complainant and the Respondent that could give rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s mark. See Guerlain S.A v. H I Investments, WIPO Case No. D2000-0494 (no rights or legitimate interest found where the complainant has not licensed or otherwise permitted the respondent to use its trademark or to apply for a domain name incorporating its trademark).

The Panel also finds no evidence that the Respondent is commonly known by the Domain Names or that the Domain Names are in any other way identified with or related to any rights or legitimate interests of the Respondent. The Panel accordingly finds that having regard to the popularity of the FITFLOP trademark, as well as the fact that the Respondent has no rights in this mark, the Respondent did not register the Domain Names for any legitimate or fair-use purpose. The Panel accepts the Complainant’s arguments that the Respondent registered the Domain Names and used the Complainant’s mark to profit from the web traffic generated by consumers seeking to purchase the Complainant’s products, or from the association and goodwill between the Domain Names and the Complainant’s well-known marks. See Madonna Ciccone, p/k/a Madonna v Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“Use which intentionally trades on the fame of another cannot constitute a “bona fide” offering of goods and services”); See also Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 (“a visitor to Respondent’s site would be likely to believe that it was Complainant’s official site…[s]uch a confusing commercial use cannot be ‘legitimate’ under the Policy.”).

The Panel also finds that the Respondent’s use of the FITFLOP trademark, whether in connection with counterfeit products or the purported resale (which the Complainant has in any event not authorized) of FITFLOP products cannot constitute a bona fide use of the mark under paragraph 4(c)(i) of the Policy. See Cartier Int’l, N.V. v. Lee, WIPO Case No. D2009-1758 (Respondent’s use of a domain name to sell counterfeit goods “cannot be found to have made a bona fide offering of goods and services”); see also Avon Products, Inc. v. Lee, WIPO Case No. D2001-0272 (“A Respondent cannot use Complainant’s trademark in a domain name when the Respondent, even though selling Complainant’s goods, has no permission to use the trademark as the domain name”).

The Panel concludes that the Complainant has made out a prima facie case. The Respondent has clearly not established that he is making a legitimate non commercial or fair use of the Domain Names or that he has any other rights or legitimate interests to the Domain Names.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed Domain Names have been registered and used in bad faith.

The Complainant submits that the Respondent has registered and used the Domain Names in bad faith. On the evidence, the Complainant contends that the Respondent has no license or other authorization to use the FITFLOP trademark. The FITFLOP trademark is a well-known mark based on the evidence adduced by the Complainant, which the Panel accepts, and clearly, the Respondent must have known about the Complainant’s mark and business when registering the Domain Names. Accordingly, there is little doubt that the Respondent registered the Domain Names long after the FITFLOP trademark was in use and registered in many countries worldwide.

The Panel finds that the Respondent has registered and is using the Domain Names in bad faith for commercial gain and to benefit from the likely confusion that the Domain Names are connected with the Complainant. The Domain Names incorporate entirely the Complainant’s popular FITFLOP trademark. The Panel accepts, as found by other panels, that where a domain name is so obviously connected with a well-known product, its very use by someone with no connection with the product suggests opportunistic bad faith: see for example Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”); see also Farouk Systems Inc. v. Originalchi.com, WIPO Case No. D2007-1201 (finding bad faith where suggestion of connection with the complainant and recognizing that “If the Respondent’s products are counterfeits, then the case against it is even stronger.”).

The Panel accepts from the evidence offered by the Complainant that the Respondent has registered and used the disputed Domain Names in a deliberate attempt to attract Internet users to his website for commercial gain by seeking to profit from the confusion created by the use of the Complainant’s marks in the Domain Names. The use of a domain name that is confusingly similar to a trademark, in order to divert traffic to a website and generate revenue, is evidence of bad faith pursuant to paragraph 4(b) of the Policy. See Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 (“It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, [internet visitors] to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site”).

The Panel is prepared to accept the contention of the Complainant that the Respondent has gone to lengths to fuel consumer confusion by making prominent use of the Complainant’s trademark and product images. Further to this, it alleges that the only reason for the Respondent’s use of Complainant’s trademark and products as the main source-identifying and attention-grabbing symbols on his website is to intentionally confuse consumers and to trade on the Complainant’s rights and reputation. See WIDEawake Entertainment Group, Inc. v. iShineMedia Case No. D2010-1824 (“The unlawful nature of the Respondent’s business, which was a transparent attempt to trade on the Complainant’s reputation, clearly supports the finding of bad faith”).

The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant, the Panel accepts the Complainant’s contentions 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.

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 Domain Names <fitflopclearance.com> and <fitflopsonsale.org> be transferred to the Complainant.

Hugues G. Richard
Sole Panelist
Dated: August 4, 2011