WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alpargatas S.A , Alpargatas Europe, SLU v. Claudia Wirtz, Domain Admin, Whoisprotection.cc, Domain Administrator, See PrivacyGuardian.org / Sven Kaestner, and Client Care, Web Commerce Communications Limited

Case No. D2021-1821

1. The Parties

The Complainants are Alpargatas S.A, Brazil, and Alpargatas Europe, SLU, Spain, represented by PADIMA, Abogados y Agentes de Propiedad Industrial, S.L., Spain.

The Respondents are Claudia Wirtz, Germany, Domain Admin, Whoisprotection.cc, Malaysia, Domain Administrator, See PrivacyGuardian.org, United States of America / Sven Kaestner, Germany, and Client Care, Web Commerce Communications Limited, Malaysia.

2. The Domain Names and Registrars

The first disputed domain name <havaianaschinelobrasil.com> is registered with Mat Bao Corporation (the “First Registrar”).

The disputed domain names <havaianasflipflopscanada.com>, <havaianasgr.com>, <havaianasitalia.com>, <havaianasoutletnz.com>, <havaianasromania.com>, and <havaianasdeutschland.com> are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Second Registrar”).

The eighth disputed domain name <havaianaspapucs.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Third Registrar”).

The ninth disputed domain name <havaianasthongsaustralia.com> is registered with NameSilo, LLC (the “Forth Registrar”).

In this decision each disputed domain name is referred to as a “Disputed Domain Name” and two or more of the disputed domain names are referred to collectively as the “Disputed Domain Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2021. On June 9, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Disputed Domain Names. On June 10, 2021, the First and Third Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. On June 11, 2021, the Second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. On June 15, 2021, the Forth 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 Complainants on June 16, 2021, providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed the first amended Complaint on June 21, 2021.

The Complainants filed the second amended Complaint on June 29, 2021, which included an extra domain name in the Complaint. On June 29, 2021, the Center transmitted by email to the Second Registrar a request for registrar verification in connection with the Disputed Domain Name <havaianasoutletnz.com>. On June 30, 2021, the Second 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 30, 2021, providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the third amended Complaint on July 1, 2021.

The Center verified that the Complaint together with the amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on July 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 29, 2021.

The Center appointed Nick J. Gardner as the sole panelist in this matter on August 5, 2021. 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 First Complainant, based in Brazil, is the owner of the trademark HAVAIANAS and the Second Complainant, based in Spain is its exclusive licensee in Europe. The Complainants are in the business of manufacturing and selling footwear, apparel, and sporting goods. Their portfolio of brands includes HAVAIANAS, a brand of flip flop sandals, beachwear, other apparel, and fashion accessories. For convenience, they will be referred to as the “Complainant” hereafter.

The Complainant owns the HAVAIANAS trademarks in many jurisdictions. The earliest trademark submitted in evidence is European Union Trade Mark Registration No. 003772431 in class 5, registered on September 20, 2005. These trademarks are referred to collectively as the “HAVAIANAS Trademark” in this decision.

The Disputed Domain Names were registered as follows:

- <havaianaschinelobrasil.com>, March 27, 2021;
- <havaianasdeutschland.com>, March 15, 2021;
- <havaianasitalia.com>, March 16, 2021;
- <havaianaspapucs.com>, March 9, 2021;
- <havaianasromania.com>, March 22, 2021;
- <havaianasthongsaustralia.com>, March 27, 2021;
- <havaianasgr.com>, May 14, 2021;
- <havaianasflipflopscanada.com>, May 13, 2021; and,
- <havaianasoutletnz.com>, June 15, 2021.

The Disputed Domain Names are each linked to different websites, which offer for sale products which are, or purport to be, those of the Complainants.

5. Parties’ Contentions

A. Complainant

The Complainants’ contentions can be summarized as follows.

Each Disputed Domain Name is confusingly similar to the HAVAIANAS Trademark. The HAVAIANAS trademark is reproduced in the Disputed Domain Names, and also combined with other words such as “chinelo” or “papucs” (which mean “slipper” in Portuguese), “flipflops”, “outlet”, “brasil”, “deutschland”, “gr”, “italia”, “romania”, “australia”, or “canada”.

The Respondents have no rights or legitimate interests in the term “havaianas”.

In consequence the Complainant alleges that each Disputed Domain Name was registered and is being used in bad faith. The Complainant says each of the Disputed Domain Names is linked to a commercial website where the Complainant’s branded items are apparently sold without any disclaimer informing about the lack of relationship with the Complainant. The Respondents’ purpose is to capitalize on the reputation of the Complainant’s trademarks by diverting Internet users seeking HAVAIANAS products in different countries to their websites for financial gain, by intentionally creating a likelihood of confusion with the Complainant’s registered trademarks as to the source, sponsorship, affiliation, or endorsement of its websites and/or the goods offered or promoted through said websites.

For the above reasons, the Complainant requests that the Disputed Domain Names be cancelled.

B. Respondents

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

6. Discussion and Findings

Preliminary Matters – No Response

The Panel notes that no communication has been received from the Respondents. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrars, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents’ failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

Preliminary Matters – Respondent identity

The Panel also notes this is a case where some of the Respondents appear to be a privacy or proxy service.

The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”

In the present case the Panel is unable to conclusively determine the relationship between all of the respondents and the Panel considers that all of the named Respondents should be considered to be the Respondents in this decision.

Preliminary Matters – Multiple Respondents

This is a case which is in formal terms brought against multiple Respondents (see above for full listing).

A complaint is allowed to proceed with multiple respondents when the domains or websites are under common control. See WIPO Overview 3.0 at section 4.11.2 where it states: “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.”

With reference to the above, the Panel agrees with the Complainant that a number of factors point to the websites linked to the Disputed Domain Names as being under common control. Specifically the Disputed Domain Names all have a similar naming pattern; the contents of the websites to which they link contain non-coincidental similarities; the Disputed Domain Names were all registered at around the same time; most of them have the same registrars; and further similarities can be found in the data as disclosed by the Registrars as to the Respondents’ contact details. In the circumstances the Panel concludes consolidation would be fair and equitable – see, e.g., Eli Lilly and Company v. Darren K. Headley, Tim. B. Hartman, Lana D. Cummings, Dante K. Ruiz, Esther G. Roberts, Joey W. Durfee, WIPO Case No. D2013-1303 and the cases therein cited.

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each Disputed Domain Names that:

(i) the Disputed Domain Name is identical with 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has rights in the HAVAIANAS trademark. The Panel finds that each Disputed Domain Name is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).

It is also established that where the relevant trademark is recognizable within the disputed domain name the addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0 at section 1.8). Each of the Disputed Domain Names combines the HAVAIANAS trademark with a descriptive or geographic term.

It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Names for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly the Panel finds that each Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The Panel finds the HAVAIANAS trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation.

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the 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.

None of these apply in the present circumstances. The Complainants have not authorised, licensed, or permitted the Respondents to register or use the Disputed Domain Name or to use the HAVAIANAS trademark. The Complainant has prior rights in the HAVAIANAS trademark which precede the Respondents’ acquisition of the Disputed Domain Names. The use of the confusingly similar Disputed Domain Names to resolve to websites impersonating and/or falsely implying an association with the Complainant, without any disclaimer of the lack of relationship between the Respondents and the Complainant, constitutes neither a bona fide offering of goods or services, nor a noncommercial or fair use of the Disputed Domain Names in the present circumstances. The Complainants have therefore established a prima facie case that the Respondents do not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).

Furthermore, the nature of the Disputed Domain Names, comprising the Complainant’s widely-known trademark and various descriptive or geographic terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0 at section 2.5.1).

The Panel finds that the Respondents have failed to produce any evidence to establish their rights or legitimate interests in the Disputed Domain Names. Accordingly, the Panel finds the Respondents have no rights or any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present circumstances the evidence as to the extent of the reputation the Complainant enjoys in the HAVAIANAS trademark, and the fact that the Disputed Domain Name was linked to websites appearing to offer the Complainants’ products lead the Panel to conclude the Disputed Domain Names were each registered and are being used in bad faith.

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

In the present circumstances the Panel agrees with the Complainant that factor (iv) applies as the Respondent was seeking to achieve commercial gain by attracting customers who were likely to be confused by the nature of the Disputed Domain Names. Each Disputed Domain Name is linked to a website which gives the inaccurate impression that it is operated by or with the permission of the Complainants. The Panel also notes that the Respondents have not filed a Response and hence have not availed themselves of the opportunity to present any case of good faith that they might have. The Panel infers that none exists.

Accordingly, the Panel finds that each of the Disputed Domain Names has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

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 Names, <havaianaschinelobrasil.com>, <havaianasdeutschland.com>, <havaianasflipflopscanada.com>, <havaianasgr.com>, <havaianasitalia.com>, <havaianasoutletnz.com>, <havaianaspapucs.com>, <havaianasromania.com>, and <havaianasthongsaustralia.com>, be cancelled.

Nick J. Gardner
Sole Panelist
Date: August 19, 2021