WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alpargatas S.A and Alpargatas Europe, SL v. Perry Taylor / Manuela Bohm / Michelle Hart / Silke Mahler
Case No. D2020-1907
1. The Parties
Complainants are Alpargatas S.A. (“First Complainant”), Brazil, and Alpargatas Europe, SL (“Second Complainant”), Spain, represented by PADIMA, Abogados y Agentes de Propiedad Industrial, S.L., Spain.
Respondents are Perry Taylor, United States of America / Manuela Bohm, Germany / Michelle Hart, United States of America / Silke Mahler, Germany.
2. The Domain Names and Registrar
The disputed domain names <chanclashavaianas.com>, <havaianasgreece.com>, <havaianasportugal.com> and <havaianasshoe.com> (the “Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on July 28, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainants filed an amended Complaint on July 31, 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 Respondents of the Complaint, and the proceedings commenced on August 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2020. Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2020.
The Center appointed Marina Perraki as the sole panelist in this matter on September 25, 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
First Complainant, Alpargatas SA, is a company seated in Brazil and is the owner of HAVAIANAS trademarks for clothing, footwear and headgear. Second Complainant, Alpargatas Europe, SL is its exclusive licensee in Europe. Complainants operate their official HAVAIANAS website at “www.havaianas-store.com”. Per Complaint, HAVAIANAS is a worldwide known trademark.
First Complainant is the owner of inter alia the following trademark registrations:
- European Union Trade Mark registration No. 007156128 HAVAIANAS (word), filed on August 11, 2008 and registered on March 23, 2009 for goods in international class 25;
- European Union Trade Mark registration No. 008664096 HAVAIANAS (figurative), filed on November 5, 2009 and registered on April 23, 2010 for goods in international class 25; and
- European Union Trade Mark registration No. 003772431 HAVAIANAS (figurative), filed on April 29, 2004 and registered on September 20, 2005 for goods in international class 25.
The first Domain Name <chanclashavaianas.com> was registered on May 9, 2020. The second Domain Name <havaianasgreece.com> was registered on May 10, 2020. The third Domain Name <havaianasportugal.com> was registered on May 11, 2020. The fourth Domain Name <havaianasshoe.com> was registered on April 28, 2020.
As Complainants demonstrated, all Domain Names at the time of filing of the Complaint led to commercial websites which offered for sale goods that bore the HAVAIANAS trademark of Complainants and prominently displayed Complainants’ trademarks, logos and images (“the Websites”). Currently, the first Domain Name leads to such a commercial website while the second, third and fourth Domain Names lead to inactive websites.
5. Parties’ Contentions
Complainants assert that they have established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.
Respondents did not reply to Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Names are 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 Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
6.1 Consolidation of Respondents
The Panel has considered the possible consolidation of the Complaint for the Domain Names at issue. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
The Panel notes the following features of the Domain Names and arguments submitted by Complainants in favor of the consolidation:
- the information of the ISP of the Domain Names hosting is the same;
- the similarities of the Domain Names;
- the similarities in the respective Websites’ content at one point in time;
- the Domain Names have been registered through the same Registrar, PDR Ltd. d/b/a PublicDomainRegistry.com; and
- the Domain Names’ registration dates are very close.
Considering all the above, the Panel notes that, as Complainants have argued, there appears prima facie to be one single Respondent, providing possibly fake ID details. Furthermore, named Respondents did not submit any arguments to rebut this inference.
The Panel finds that consolidation is fair to both Parties, and Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint (if indeed there are more than one Respondent) but have chosen not to respond (see WIPO Overview 3.0, sections 4.11.1 and 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302. Based on the file, the Panel finds that it is more likely than not that the Domain Names are in common control of one entity, and hence the Panel grants the consolidation.
A. Identical or Confusingly Similar
Complainants have demonstrated rights through registration and use on the HAVAIANAS mark.
The Panel finds that the Domain Names are confusingly similar to the HAVAIANAS trademark of Complainants.
The Domain Names incorporate the said trademark of Complainants in its entirety. This is sufficient to establish confusing similarity (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The words “chanclas” (which means flip flops), “Greece”, “Portugal” and “shoe”, which are added in the first, second, third and fourth Domain Names respectively, do not avoid a finding of confusing similarity (WIPO Overview 3.0, section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (see Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Names are confusingly similar to the HAVAIANAS marks of Complainants.
Complainants have established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondents lack rights or legitimate interests in respect of the Domain Names.
Respondents have not submitted any response and have not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainants, Respondents were not authorized to register the Domain Names.
Respondents did not demonstrate any bona fide use of the Domain Names prior to the notice of the dispute.
Furthermore, as Complainants demonstrated, the Domain Names resolved at the time of filing of the Complaint to the Websites containing content that suggested falsely that the Websites were those of Complainants or of an affiliated entity or of an authorized partner of Complainants.
Per Complaint, Respondents are not an affiliated entity or an authorised distributor or partner of Complainants and no agreement, express or otherwise, exists allowing the use of Complainants’ trademarks on the Websites and the use of the Domain Names by Respondents.
A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1: (i) respondent must actually be offering the goods at issue; (ii) respondent must use the site to sell only the trademarked goods; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark.
These requirements are not cumulatively fulfilled in the present case. The Domain Names falsely suggest that the Websites were official sites of Complainants or of an entity affiliated to or endorsed by Complainants. The Websites extensively reproduced, without authorization by Complainants, Complainants’ HAVAIANAS trademarks, without any disclaimer of association (or lack thereof) with Complainants.
Furthermore, the use of a domain name which intentionally trades on the fame of another and suggested affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,
WIPO Case No. D2000-0847; AB Electrolux v. Handi Sofian, Service Electrolux Lampung,
WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.5).
The Panel finds that these circumstances do not confer upon Respondents any rights or legitimate interests in respect of the Domain Names.
Complainants have established Policy, paragraph 4(a)(ii).
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 Domain Names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names 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 Names; or
(ii) that Respondent has registered the Domain Names 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 Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, 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 concludes that Respondents have registered and used the Domain Names in bad faith. Because the HAVAIANAS mark had been widely used and registered at the time of the Domain Names registration by Respondents, the Panel finds it more likely than not that Respondents had Complainants’ mark in mind when registering the Domain Names.
Furthermore, the Domain Names incorporate in whole Complainants’ mark plus additional non-distinctive words, therefore creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation or endorsement of the Domain Names.
The Websites’ content, eminently displaying Complainants’ trademarks and offering for sale goods bearing Complainants’ trademarks, further supports knowledge of Complainants and their field of activity.
As Complainants demonstrated, the Websites’ content were targeting Complainants’ trademark, as they prominently displayed Complainants’ HAVAIANAS trademark and products bearing Complainants’ trademarks. This further supports a finding of registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Names as in some way endorsed by or connected with Complainants (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).
As regards bad faith use of the Domain Names, Complainants have demonstrated that the Domain Names were used to resolve to Websites, which prominently displayed Complainants’ registered trademarks, logos, and images, offering for sale goods bearing Complainants’ trademarks, thereby giving the false impression that they were operated by Complainants or a company affiliated to Complainants or an authorised reseller or partner of Complainants. The Domain Names operated therefore by intentionally creating a likelihood of confusion with Complainants’ trademark and business as to the source, sponsorship, affiliation or endorsement of the Websites they resolved to. This supports the finding of bad faith use (WIPO Overview 3.0, section 3.1.4).
Under these circumstances and on this record, the Panel finds that Respondents registered and used the Domain Names in bad faith.
Complainants have established Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <chanclashavaianas.com>, <havaianasgreece.com>, <havaianasportugal.com> and <havaianasshoe.com> be transferred to Complainants.
Date: October 9, 2020