WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alpargatas S.A. v. Whois agent (869611973), Whois Privacy Protection Service, Inc. / Alan Vitor, Leite Santos
Case No. D2020-1325
1. The Parties
The Complainant is Alpargatas S.A., Brazil, represented by Murta Goyanes Advogados, Brazil.
The Respondent is Whois agent (869611973), Whois Privacy Protection Service, Inc., United States of America (“United States”) / Alan Vitor, Leite Santos, Brazil.
2. The Domain Name and Registrar
The disputed domain name <ashavaianas.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2020. On May 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 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 the Complainant on June 2, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 4, 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 June 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2020.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on July 13, 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
The Complainant is Alpargatas S.A, a traditional Brazilian company founded in 1907 and engaged in the shoes and apparel manufacturing business. The Complainant has a reputation in the national and international markets with special reference to its “Havaianas” sandals, which is well known by consumers. Also, the famous status of the mark HAVAIANAS has been acknowledged by the Brazilian Trademark and Patent Office.
The Complainant owns several trademark registrations for the trademark HAVAIANAS in different classes of products and services and in multiple jurisdictions, including the following:
- United States trademark registration Number 1858280 registered on October 11, 1994 in international class 25; and
- Brazilian trademark registration Number 811181197 registered on October 30, 1984 in national class 25/10.20.30.
The Complainant also owns numerous domain names consisting of the mark HAVAIANAS, including the domain names <havaianas.com>, registered on June 21, 1997, and <havaianas.com.br>, registered on November 4, 2008, which are being used as the Complainant’s official websites in the United States and in Brazil, respectively.
The disputed domain name was registered on September 12, 2019 and is inactive.
5. Parties’ Contentions
The Complainant argues that the Respondent registered the disputed domain name on September 12, 2019 entirely reproducing the mark HAVAIANAS, in addition to the descriptive term “as”, which in Portuguese means “the” and that this is not sufficient to avoid the confusing similarity with the Complainant’s trademark.
The Complainant mentions that its trademark registrations for the mark HAVAIANAS predate the disputed domain name, that the Respondent is not authorized or licensee of the Complainant and that it has no rights or legitimate interests in respect of the disputed domain name.
The Complainant adds that although “havaianas” is a dictionary word meaning “Hawaiian” in Portuguese, this fact itself does not confer rights or legitimate interests to the Respondent, since it does not use the disputed domain name to provide content related to the dictionary meaning of the word “havaianas”.
In addition, the Complainant mentions that although the Respondent is not currently using the disputed domain name, a search on the Google website typing the disputed domain name suggests that Internet users are looking for the Complainant’s official website <havaianas.com>. Complainant says that consumers are likely to believe that the disputed domain name corresponds to the Complainant’s official website or is sponsored by or affiliated with it.
The Complainant also informs that the Respondent used a privacy protection service to avoid being contacted.
According to the Complainant, the Respondent is not authorized to register or use the disputed domain name, and it was registered with full knowledge of the Complainant’s rights. Also, considering that the term “as” added to the mark HAVAIANAS means “the”, the Complainant believes that the Respondent’s intention was to lead consumers into confusion or association with the Complainant’s official website, which demonstrates bad faith.
Finally, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the owner of several trademark registrations and numerous domain names for HAVAIANAS around the world, including Brazil and the United States.
The disputed domain name incorporates the Complainant’s trademark HAVAIANAS in its entirety. Indeed, the addition of the term “as” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademark.
It is the general view among UDRP panels that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a trademark in a domain name is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110).
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark HAVAIANAS.
There is no evidence that the Respondent is commonly known by the disputed domain name. Also, the disputed domain name was registered using a privacy protection service.
There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.
Noting the above, the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has provided no claims or evidence that would support a finding of rights or legitimate interests in the disputed domain name.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complaint demonstrates that the trademark HAVAIANAS is registered by the Complainant in several jurisdictions and has been used for many years with huge success. Also, the Complainant registered many different domain names consisting of the mark HAVAIANAS, including the domain name <havaianas.com>, registered in 1997.
The disputed domain name incorporates the Complainant’s well-known trademark HAVAIANAS and the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant’s HAVAIANAS mark is widely known and has a strong online visibility. Thus, a domain name that comprises such a well-known mark is already suggestive of the registrant’s bad faith.
Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that the disputed domain name belongs to or is associated with the Complainant.
Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. In these circumstances, and as found in the UDRP panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.
UDRP panels have also viewed a respondent’s use of a privacy or proxy service may support an inference of bad faith. See section 3.6 of the WIPO Overview 3.0. Here, the use of a privacy service to register the disputed domain name wholly incorporating the Complainant’s well‑known trademark supports an inference of bad faith in the circumstances of this case.
This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark HAVAIANAS as described in paragraph 4(b)(iv) of the Policy has been demonstrated. The fact that the disputed domain name does not resolve to an active website does not prevent a finding of bad faith. In the circumstances, passive holding of the disputed domain name is further evidence of the Respondent’s bad faith.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.
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 <ashavaianas.com> be transferred to the Complainant.
Mario Soerensen Garcia
Date: July 22, 2020