WIPO Arbitration and Mediation Center


Vivobarefoot Limited v. G. Lunenborg

Case No. DNL2017-0025

1. The Parties

Complainant is Vivobarefoot Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Penningtons Manches LLP, United Kingdom.

Respondent is G. Lunenborg of Hardinxveld-Giessendam, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <vivobarefoot.nl> (the “Domain Name”) is registered with SIDN through TransIP B.V.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2017. On April 26, 2017, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. With a view to the expiration of the Domain Name SIDN confirmed that it has maintained the registrar lock. On May 16, 2017, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 18, 2017. In accordance with the Regulations, article 7.1, the due date for Response was June 7, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 8, 2017.

The Center appointed Richard C.K. van Oerle as the panelist in this matter on June 13, 2017. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

Complainant is a footwear company registered in England and Wales on December 2, 1997.

According to the evidence submitted by Complainant, Complainant is the registered owner of the word mark VIVOBAREFOOT, registered as European Union (“EU”) Trademark under registration no. 009510447. Complainant filed the mark on November 10, 2010 and it was registered on May 2, 2011. The trademark will be referred to hereunder as the “Trademark”.

The Domain Name was registered on August 16, 2014 by Respondent, an individual.

The Domain Name led to a default page of the provider at the time of filing of the Complaint. According to Complainant the Domain Name has never gone live.

5. Parties’ Contentions

A. Complainant

Complainant undertakes public activities under the Trademark on a permanent basis. Complainant has manufactured and sold over a million pairs of shoes worldwide under the Trademark for 12 years and has developed significant goodwill and reputation in relation thereto. Complainant is the registrant of <vivobarefoot.co.uk> and <vivobarefoot.com> and provides its goods from, inter alia, <vivobarefoot.co.uk>, <vivobarefoot.com>, <vivobarefoot.de>, <vivobarefoot.in> and <vivobarefoot.eu>. In the Netherlands specifically, as at the date that the Domain Name was registered, Complainant sold its goods through two recognized retailers.

The Domain Name comprises the word “vivobarefoot” which forms the whole of the Domain Name. The Domain Name is identical to the Trademark.

Respondent has no rights to or legitimate interests in the Domain Name because Respondent is not a licensee or authorized agent of Complainant or in any way legally permitted to use the Trademark. Further, Respondent is not known by “Vivobarefoot”.

The Domain Name was registered over two and a half years ago and has not gone live. It can be inferred that Respondent has no, and has never had any, intention of using the Domain Name for any business. In the premises, Respondent’s activities do not constitute a bona fide offering of goods or services.

As a result of Complainant’s use of the Trademark described above, Respondent must have known about Complainant’s rights in the Trademark when it registered the Domain Name. Further, the term “vivobarefoot” is unusual and distinctive and readily recognizable.

It is highly unlikely that Respondent registered the Domain Name in order to provide its goods and/or services therefrom in relation to a legitimate business. As the Domain Name has not been live since it was registered over two years ago, it can reasonably be inferred that the Domain Name was registered for the purposes of either (i) in order to prevent Complainant from using it and/or (2) in order to disrupt Complainant’s business and /or (3) for the purpose of renting or transferring it to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:

a. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which Complainant has rights, or other name mentioned in article 2.1(a) under II of the Regulations; and

b. Respondent has no rights to or legitimate interests in the domain name; and

c. the domain name has been registered or is being used in bad faith.

Article 10.3 of the Regulations provides that in the event a respondent fails to submit a response, the complaint shall be granted unless the panel considers it to be without basis in law or in fact. The Panel thereby notes that this does not mean that the requested remedy should automatically be awarded. The Panel will have to determine whether Complainant’s prima facie case meets the requirements of article 2.1 of the Regulations (Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067, Altro Limited v. Handelsonderneming H.M.S. B.V., WIPO Case No. DNL2012-0047).

The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonable available means to achieve actual notice of the Complaint to Respondent.

The Panel notes that Respondent has not filed a response and shall therefore rule on the basis of the Complaint.

A. Identical or Confusingly Similar

Pursuant to article 2.1(a) of the Regulations, Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or tradename protected under Dutch law in which Complainant has rights.

Complainant has established that it is the owner of the EU trademark VIVOBAREFOOT.

The Domain Name, <vivobarefoot.nl>, incorporates the entirety of the VIVOBAREFOOT trademark. Many decisions under the Regulations have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the trademark in its entirety. It is standard .nl jurisprudence that the country code Top-Level Domain “.nl” may be disregarded for purposes of article 2.1(a) of the Regulations.

The Panel finds that the Domain Name is confusingly similar to Complainant’s Trademark and that Complainant has met the requirement of article 2.1(a) of the Regulations.

B. Rights or Legitimate Interests

As a result of its failure to submit a Response, Respondent did not use the opportunity to show rights to or legitimate interests in the Domain Name. The Panel could not establish any indications that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent in any possible other way has a right to or legitimate interest in the Domain Name.

On the above grounds, the Panel finds that Complainant has met the requirement of article 2.1(b) of the Regulations.

C. Registered or Used in Bad Faith

The Panel finds that the Domain Name has been registered in bad faith. Considering the apparent well-known status of the Trademark, not to mention the specificity of the term, the Panel finds that Respondent was aware or should have been aware of Complainant and its Trademark at the time of registration of the Domain Name.

Previous panels have found that the incorporation of a well-known trademark in a domain name without plausible explanation is in itself an indication of bad faith (see Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. In this respect, the Panel notes that Respondent has not offered any such explanation.

More generally, the Panel finds that the Complaint meets the requirements of article 10.3 of the Regulations.

On the above grounds, the Panel finds that the requirements of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations have been met.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <vivobarefoot.nl> be transferred to Complainant.

Richard C.K. van Oerle
Date: June 23, 2017