WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vibram S.p.A. v. Xu Fengrong

Case No. D2010-1275

1. The Parties

The Complainant is Vibram S.p.A. of Italy, represented by Avvocati Associati Feltrinelli & Brogi, Italy.

The Respondent is Xu Fengrong of Fujian Province, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <vibramfivefingersonsale.com> is registered with Xin Net Technology Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2010. On July 30, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On August 2, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On August 3, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.

The Center verified that the 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 August 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2010.

The Center appointed Dr. Hong Xue as the sole panelist in this matter on September 14, 2010. 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 producer of rubber soles and the owner of several registrations for the trademarks VIBRAM and FIVEFINGERS.

The Respondent registered the disputed domain name <vibramfivefingersonsale.com> on March 5, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <vibramfivefingersonsale.com> is confusingly similar to the trademarks VIBRAM and FIVEFINGERS, the registration and use of which by the Complainant long precedes the registration of the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Complainant requests that the disputed domain name <vibramfivefingersonsale.com> be transferred to it.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceeding

The language of the registration agreement for the disputed domain name <vibramfivefingersonsale.com>, as confirmed by the Registrar, is Chinese. The Complainant has requested that the language of proceedings be English and has presented its reasons. The Respondent did not make any submissions in relation to the language of proceedings even though the Center’s communications to this effect (as was the Notification of Complaint) were both in English and in Chinese.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Among other circumstances, the respondent’s ability to clearly understand the language of the complaint, and the complainant’s being disadvantaged by being forced to translate, may both support a panel’s determination that the language of proceedings remains the language of the complaint, even if it is different from the language of the registration agreement (L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

According to the Rules, paragraph 10(b), the Panel shall ensure that the parties are treated with equality and that each Party is given a fair opportunity to present its case. Therefore a panel shall objectively assess the Parties’ language ability in the proceeding. In the present case, the Panel finds that the Respondent has sufficient capacity to present its case in English. The Panel’s conclusion is based primarily on the fact that the website established at the disputed domain name, <vibramfivefingersonsale.com>, displays the contents solely in English. On the other hand, it is genuinely difficult for the Complainant to translate all the submissions into and take part in the proceeding in the language of the registration agreement.

Having considered all the circumstances, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding.

B. Identical or Confusingly Similar

Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark rights and the similarity between the disputed domain name and its trademark.

The Panel finds that before the registration of the disputed domain name the trademarks VIBRAM and FIVEFINGERS had been registered and used on the Complainant’s rubber soles products in a number of countries.

The disputed domain name is <vibramfivefingersonsale.com>. Apart from the generic top-level domain suffix “.com”, the disputed domain name consists of “vibramfivefingersonsale”, which can easily be read as “vibram”, “fivefingers”, “on” and “sale”. It is established by numerous decisions made under the Policy that adding generic words to a complainant’s mark does not preclude a finding of confusing similarity (Prada S.A. v. Roderick G. Arnold, WIPO Case No. D2002-0928). Given that the disputed domain name contains the Complainant’s trademarks VIBRAM and FIVEFINGERS in their entirety, adding the generic term “on sale” does not preclude the disputed domain name from being confusingly similar to the Complainant’s trademarks.

The Panel therefore finds that the disputed domain name <vibramfivefingersonsale.com> is confusingly similar to the Complainant’s registered trademarks VIBRAM and FIVEFINGERS. Accordingly, the Complainant has proven the first element required by paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent did not provide any information to the Panel asserting any right or legitimate interest it may have in the disputed domain name.

It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent’s rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.

Therefore, and also in light of the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent did not respond.

Through examining the evidence submitted, the Panel is impressed by the fact that the website set up at the disputed domain name <vibramfivefingersonsale.com> highlights the marks VIBRAM and FIVEFINGERS and sells various shoes, including what appears to be the Complainant’s Vibram Fivefingers shoes. Since the disputed domain name was registered and is fully controlled by the Respondent, the Respondent is responsible for any use of the disputed domain name. The Complainant, however, stated clearly that it had never granted the Respondent any license or other authorization to sell Vibram Fivefingers shoes.

The Panel therefore finds that the Respondent’s use of a disputed domain name that is confusingly similar to the Complainant’s marks to attract consumers to a website that is unauthorizedly using the Complainant’s trademarks to commercialize shoes that are identical with or similar to the Complainant’s products is highly likely to cause confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products on the Respondent’s website.

The Panel finds that this is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith under the Policy, paragraph 4(b)(iv). Therefore, the Complainant has successfully proven the third element required by paragraph 4(a) of the Policy.

7. Decision

For all 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 <vibramfivefingersonsale.com> be transferred to the Complainant.

Dr. Hong Xue
Sole Panelist
Dated: September 28, 2010