WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alpargatas S.A. v. Privacy.co.com, Savvy Investments, LLC Privacy ID# 884284
Case No. D2019-0777
1. The Parties
The Complainant is Alpargatas S.A. of Brazil, represented by Murta Goyanes Advogados, Brazil.
The Respondent is Privacy.co.com, Savvy Investments, LLC Privacy ID# 884284 of United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <havaiana.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2019. On April 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on April 20, 2019.
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 Respondent of the Complaint, and the proceedings commenced on April 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on May 22, 2019. 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, Alpargatas, was founded in 1907 and is a leading and world-renowned Brazilian footwear company that, in particular has become famous for its flip-flops sold under the trademark HAVAIANAS. The Complainant is, inter alia, holder of the United States trademark HAVAIANAS (word mark), registered on July 18, 1995, registration number: 74435305, for goods in class 25 (footwear).
According to the Complainant, because of its lengthy, large-scale and intensive use, the trademark is a “well known trademark” within the meaning of Article 125 of the Brazilian Industrial Property Law.
In addition, the Complainant has registered several domain names composed by the said mark, including but not limited to <havaianas.com>, <havaianas.com.br>, and <havaiana.com.br>.
The Respondent registered the disputed domain name on August 8, 2002, and it resolves to a pay-per-click (“PPC”) website with links related to flip-flops.
5. Parties’ Contentions
The disputed domain name <havaiana.com> is confusingly similar to the Complainant’s famous HAVAIANAS mark since it incorporates the mark in its entirety. The only difference is the absence of the letter “s” at the end of the “havaiana” name.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never authorized the Respondent to register the disputed domain name and since the disputed domain name has been used and continues to be used for a pay-per-clickwebsite that contains links to third party websites that purportedly offer footwear including footwear of competitors of the Complainant, the Respondent is not using the disputed domain for a bona fide offering of goods and services, nor is the Respondent making a noncommercial or fair use of the disputed domain name. The Complainant emphasizes that although “havaiana” is a dictionary word (as it means “Hawaiian”, in Portuguese), the Respondent does not use the disputed domain name to provide content related to the meaning of the term “havaiana”, but to content that relates to the Complainant’s trademark.
Finally, the Complainant asserts that given the fame of Complainant’s trademark HAVAIANAS and the Complainant’s numerous prior rights in the mark, the Respondent must have been aware of the Complainant’s rights at the time of registration of the disputed domain name. Further, the Respondent uses the disputed domain name actively in a way that intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s mark. In addition, the Complainant asserts that the fact that the Respondent uses a privacy service supports an inference of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <havaiana.com> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark HAVAIANAS since it incorporates the said registration in full with the omission of the letter “s” in the end. The generic Top-Level Domain (“gTLD”) “.com” does not dispel a finding of confusing similarity as it is disregarded under the first element confusing similarity test, see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, and in particular the way that the Respondent has been using the disputed domain name, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has chosen not to participate in the proceeding, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings. In this context, the Panel particularly notes that it agrees with the Complainant’s submission that although the term “havaiana” is a dictionary word in Portuguese, the disputed domain name is not used in connection with this meaning but for a corresponding website which contains commercial links that target the Complainant’s trademark HAVAIANAS. See section 2.10 of the WIPO Overview 3.0.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances, which shall be evidence of registration and use 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 Respondent’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 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 the Respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the evidence on record of the longstanding use of the Complainant’s trademark HAVAIANAS, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s marks. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
Also, the Respondent is at present using the disputed domain name actively for a standard PPC page that contains links to the websites of third parties some of which appears to offer the Complainant’s products and some of which offer products of competitors of the Complainant. It is thus obvious to the Panel that the Respondent is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, web users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
Noting that the disputed domain name incorporates a registered trademark and that the disputed domain name is used for commercial gain and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) and 4(b) of the Policy are also fulfilled in this case.
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 name <havaiana.com> be transferred to the Complainant.
Date: June 5, 2019