WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alpargatas S. A. v. PrivacyProtect.org / kael

Case No. D2012-1767

1. The Parties

The Complainant is Alpargatas S. A. of Sâo Paulo, Brazil, represented by DLA Piper US LLP, United States of America.

The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia / kael of New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <havaianascanada.org> is registered with Click Registrar, Inc. d/b/a publicdomainregistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2012. On September 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2012, 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 September 5, 2012 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 September 5, 2012, and further amended the Complaint on September 10 and 13, 2012.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2012.

The Center appointed Enrique Ochoa as the sole panelist in this matter on October 16, 2012. 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 a Brazilian company which commercializes sandals and espadrilles since 1962.

It is the owner of the trademark HAVAIANAS registered worldwide and it has developed to become an international well known manufacturer of flip flop sandals.

The Complainant owns several trademarks, registered throughout the world. It is in particular the owner of registered trademarks in Canada and the domain name <havaianascanada.com>.

The disputed domain name was registered on July 13, 2012. The disputed domain name is automatically directed to a site which offers products related to the HAVAIANAS trademark and displays “WELCOME TO HAVAIANAS CANADA ONLINE SHOP!”

5. Parties’ Contentions

A. Complainant

Concerning the first element under the Policy, the Complainant submits that the disputed domain name is identical to or confusingly similar with its HAVAIANAS trademark and its <havaianascanada.com> domain name.

Concerning the second element under the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. More specifically, the Complainant submits that (1) the Respondent is not associated in any way to the Complainant or its distribution network; (2) the Respondent has never been commonly known in the normal course of business by the “Havaianas” name; and (3) there is no evidence of a bona fide noncommercial or other legitimate fair use by the Respondent.

Concerning the third element under the Policy, the Complainant alleges that the Respondent has registered and used the disputed domain name in bad faith. According to the Complainant, it is inconceivable that the Respondent could not have been aware of the HAVAIANAS trademark at the time it registered the disputed domain name. In this respect, the Complainant contends that it may be presumed from the fact that the Domain Name is linked to a website that expressly refers to “Havaianas” flip-flops that Respondents knew the scope of Complainant’s offerings which are commercialized under its HAVAIANAS Mark.

On this basis, the Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (see below, section B); and

(iii) the disputed domain name has been registered and is being used in bad faith (see below, section C).

Under paragraph 4(a) of the Policy, the burden of proof with regard to these elements lies with the Complainant.

Here, the Respondent provided no response, and the deadline for so doing expired on October 4, 2012. Accordingly, the Respondent is in default. Given the Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, the Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant has offered sufficient evidence to prove it is the owner of several valid Canadian trademarks and other trademarks for other countries regarding HAVAIANAS name.

The first issue is whether the Disputed Domain Name and the HAVAIANAS® mark are identical or confusingly similar.

The Disputed Domain Name combines two elements: (1) Complainant’s HAVAIANAS mark plus the name of the country “Canada” and (2) the domain suffix “.com”. As recognized by previous UDRP panels, the disputed domain name is confusingly similar to the Complainant’s registered HAVAIANAS Mark because the disputed domain name incorporates the HAVAIANAS Mark in its entirety and adds only a gTLD and a country name. See Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150 (finding the domain name <walmartcanada.com> to be confusingly similar with Complainant’s famous mark WAL-MART); The Prudential Insurance Company of America v. J. J. Corp., NAF Claim No. FA 0008000095509 (finding that the mere addition of the generic or descriptive word “brazil” and “america” to the Complainant’s PRUDENTIAL mark did not alleviate confusing similarity in the domain names <prudentialamerica.com> and <prudentialbrazil.com>.

Consequently, this Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that:

(i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a domain name, after which the burden of rebuttal passes to the respondent. See Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (citing Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).

As a consequence thereof, this Panel finds that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a list of indicative circumstances that, if found by the Panel to be present, shall be evidence of bad faith registration and use, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel considers it an inescapable conclusion from the undisputed facts and circumstances reflected in the record that the Respondent must have had in mind the Complainant’s mark when registering the disputed domain name. See generally Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the use of the domain name by a registrant with no connection to the complainant and with no rights and legitimate interests to that domain name may suggest “opportunistic bad faith”. See also Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. In this case, the products displayed on the website associated with the disputed domain name are of the same category (sandals) of the Complainant’s. In view of the foregoing, the Panel can ascribe no motive for the Respondent’s registration and use of the disputed domain name as reflected in the record except to trade on the goodwill associated with the Complainant’s mark.

In line with the above mentioned, the Panel finds that the Respondent’s registration and use of the disputed domain name constitutes bad faith in the present circumstances. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 (finding bad faith where a domain name is so obviously connected to a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith).

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 domain name <havaianascanada.org> be transferred to the Complainant.

Enrique Ochoa
Sole Panelist
Dated: October 31, 2012