WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alpargatas S.A. v. Domain Admin, Whoisprotection.cc / Rizky Fauzy, Busana/Pakaian -- PT Kanmo Retailindo Havaianas Indonesia
Case No. D2020-1111
1. The Parties
Complainant is Alpargatas S.A., Brazil, represented by Murta Goyanes Advogados, Brazil.
Respondent is Domain Admin, Whoisprotection.cc, Malaysa / Rizky Fauzy, Busana/Pakaian -- PT Kanmo Retailindo Havaianas Indonesia, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <havaianasid.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2020. On May 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 14, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 19, 2020.
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 May 20, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was June 9, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on June 16, 2020.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on July 8, 2020. 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
Complainant is a Brazilian company, established in 1907, operating in the footwear and apparel business. Complainant states that it has manufactured and sold shoes under the HAVAIANAS trademark (the “Mark” or the “HAVAIANAS Mark”) in Brazil since 1962 and internationally since 1970.
Complainant is the proprietor of numerous trademark registrations in jurisdictions around the world, including the following:
- Brazilian trademark registration No. 811181197 for HAVAIANAS (word mark), registered on October 30, 1984 for goods in class 25;
- United States trademark registration No. 1858280 for HAVAIANAS (word mark), registered on October 11, 1994 or goods in class 25;
- Indonesian trademark registration No. IDM000027275 for HAVAIANAS (figurative mark), registered on
January 13, 2005 for goods in class 25.
Complainant has registered a number of domain names containing the HAVAIANAS Mark including
<havaianas.com> and <havaianas.co.id>.
The disputed domain name <havaianasid.com> was registered by Respondent on November 22, 2019. It does not resolve to an active website.
5. Parties’ Contentions
Under the first element, Complainant states that the disputed domain name <havaianasid.com> reproduces Complainant’s famous HAVAIANAS Mark. The only difference is the addition of the geographical term “id”, an acronym for Indonesia, at the end of the disputed domain name, which does not add any distinctiveness as it is a geographic term. Complainant uses domain names comprising the Mark with various domains targeted for countries in which it markets its goods, such as <havaianas.com> in the United States and <havaianasaustralia.com.au> in Australia, where it uses the domain <havaianasau.com> to redirect to its primary Australian website. Google searches for the disputed domain name yield results related to Complainant, which would confuse Internet users and cause them to believe that Respondent is an agent of Complainant in Indonesia. The disputed domain name is confusingly similar to Complainant’s Mark.
Under the second element, Complainant states that it has never authorized Respondent to register the disputed domain name, and has no licensing nor business relationship with Respondent. Although “Havaianas” is a dictionary term, as it means “Hawaiians” in Portuguese, this fact does not confer rights nor legitimate interests on Respondent. Respondent does not use the disputed domain name in a way that would not target Complainant’s Mark, such as by providing information related to the term “Havaianas,” as Respondent does not use the disputed domain name at all.
Respondent does not meet any of the conditions set forth in paragraph 4(c) of the Policy. First, it is not making a bona fide offering of goods or services using the disputed domain name. There is no relationship between Complainant and Respondent and Respondent is not using the disputed domain name as it does not resolve to an active website. Second, Respondent is not commonly known worldwide by the disputed domain name. It is unlikely Respondent could have achieved such renown, considering that it registered the disputed domain name 25 years after Complainant registered its Mark in the United States. There is no noncommercial or fair use of the disputed domain name, which Respondent chose so that Internet users would believe that Respondent is Complainant’s official agent in Indonesia.
Under the third element, Complainant states that Respondent had registered and used the disputed domain name in bad faith as it has registered the disputed domain name for the purpose of preventing the owner of the trademark from using its mark in the corresponding domain name. While there is not a pattern of conduct on behalf of Respondent, the circumstances indicate that Respondent acted in opportunistic bad faith since the disputed domain name is so obviously connected with Complainant. The circumstances indicate that Respondent targeted Complainant in registering a domain name comprising Complainant’s Mark with a geographical indication while lacking rights or legitimate interests in the disputed domain name. Knowing Complainant’s pattern of registering domain names consisting of its Mark and a geographical term, Respondent intended to mislead Internet users into believing it was associated with Complainant. Passive holding of the disputed domain name does not prevent a finding of bad faith use due to the cumulative circumstances of the case, including Respondent’s use of a privacy service.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the HAVAIANAS Mark through registrations in several jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s HAVAIANAS Mark with the disputed domain names, the Panel finds that the disputed domain name is confusingly similar with the HAVAINAS Mark. The disputed domain name contains the HAVAINAS Mark in its entirety. The addition of the letters “id” does not prevent a finding of confusing similarity with the HAVAINAS Mark, which is clearly recognizable within the disputed domain name.
Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in it. The nature of the disputed domain name, which contains Complainant’s long-established HAVAIANAS Mark together with the term “id,” cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1. While “Havaianas” is itself a dictionary term, as the word means “Hawaiians” in Portuguese, the Panel finds that the nature of the Mark, the extent and length of its use, and Complainant’s registration of domain names containing the Mark and geographic terms are circumstances that support this finding. See WIPO Overview 3.0, section 2.10.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the HAVAIANAS Mark with the permission of Complainant. The fact that Respondent identified itself as “PT Kanmo Retailindo Havaianas Indonesia” in its registration does not, in itself, establish such rights, as there is no evidence available to show that Respondent was legitimately trading under this name prior to the date of registration of the disputed domain name. The Panel finds, that, for paragraph 4(c) to apply, Respondent must have been commonly known by the disputed domain name “as at the date of registration of the domain name.” (See Rothschild Bank AG, N M Rothschild & Sons Limited and Rothschild Continuation Holdings AG v. Rothchild Corporation and Rothchild Internet Development Corporation SA de CV/ Joseph Martin Rothchild, WIPO Case No. D2001-1112). There is no evidence in the record to show that Respondent had become commonly known by this name.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the nature of the Mark, the close similarity between Complainant’s Mark and the disputed domain name, and the lack of evidence to show that Respondent was commonly known by the disputed domain name or was making a legitimate noncommercial use of it, for instance, by providing information on Hawaiians. In this respect, while “Havaianas” is a dictionary term in Portuguese, the circumstances of this case indicate that the selection of the disputed domain name by Respondent was not due to its connection with the dictionary meaning in Portuguese but rather to somehow trade off Complainant’s trademark rights. Respondent could have come forward with a response, but it did not.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith registration under Policy, paragraph 4(b)(iv). Complainant’s rights in the HAVAIANAS Mark predate by decades the registration of the disputed domain name. The Mark is
long-established and, as stated by Complainant, recognized as a famous mark in Brazil. The disputed domain name contains Complainant’s Mark in its entirety, with the addition of the term “id,” which does not diminish the likelihood of confusion with the Mark. Complainant has registered numerous domain names comprising its Mark and a geographic term, and the Panel accepts that “id” could refer to Indonesia, as it is the abbreviation for the country name. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.
Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name when it was not actually being used. The Panel finds that the totality of the circumstances support the application of the passive holding doctrine. In particular, Complainant’s Mark has acquired distinctiveness, Respondent has failed to submit a response or to provide any evidence of actual or contemplated good-faith use; Respondent both concealed its identity and incorporated Complainant’s Mark in its domain name registration. There is no plausible good-faith use to which the disputed domain name may be put. See WIPO Overview 3.0, section 3.3., and cases cited thereunder.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
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, <havaianasid.com>, be transferred to Complainant.
Date: July 22, 2020