Sao
Paulo Alpargatas
Claim Number: FA1007001337848
Complainant is Sao
Paulo Alpargatas S.A. (“Complainant”), represented by Ross Q. Panko, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <havaianasmy.com>, registered with PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2010.
On August 2, 2010, PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <havaianasmy.com> domain name is registered with PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PUBLICDOMAINREGISTRY.COM registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@havaianasmy.com by e-mail. Also on August 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr,. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <havaianasmy.com> domain name is confusingly similar to Complainant’s HAVAIANAS mark.
2. Respondent does not have any rights or legitimate interests in the <havaianasmy.com> domain name.
3. Respondent registered and used the <havaianasmy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sao Paulo Alpargatas S.A., is an apparel and
textile firm in
Respondent, HAVIES H.A. /
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the HAVAIANAS mark through its registrations of the mark with the USPTO (e.g., Reg. No. 1,858,280 issued on October 11, 1994). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the HAVAIANAS mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). Moreover, the Panel finds Complainant need not hold a registration with the trademark authority in the country in which Respondent resides in order to claim rights under Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant contends Respondent’s <havaianasmy.com>
domain name is confusingly similar to its HAVAIANAS mark. Complainant alleges Respondent fully
incorporates its mark in the disputed domain name and then merely adds the
generic term “my,” which is the country code for
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first establish Respondent lacks rights and legitimate interests in the <havaianasmy.com> domain name. After Complainant establishes this prima facie case, the burden shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain name. Although the Panel may infer that Respondent lacks rights and legitimate interests due to its failure to submit a Response, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant asserts it has not authorized Respondent to use
its mark in a domain name. Furthermore,
the WHOIS information lists “HAVIES H.A. /
Complainant avers Respondent’s <havaianasmy.com> domain
name resolves to a website that purports to offer Complainant’s products. Complainant claims Respondent displays images
of goods that imitate Complainant’s products throughout its resolving website. Based on the evidence in the record, the
Panel finds Respondent is using a confusingly similar domain name to offer
counterfeit versions of Complainant’s goods.
Therefore, the Panel finds Respondent does not use the disputed domain
name to make a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard
Co. v. Inversiones HP Milenium
In addition, Complainant alleges Respondent uses the <havaianasmy.com>
domain name in an attempt to pass itself off as Complainant’s official
website. Complainant provides screen
shots of Respondent’s resolving website, which show Complainant’s mark
prominently displayed throughout the site.
Additionally, Complainant claims Respondent’s resolving website contains
floral designs and patterns that closely resemble the designs used on
Complainant’s website. The Panel finds
that the evidence in the record supports the conclusion that Respondent has
attempted to pass itself off as Complainant, which provides further evidence
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v.
Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that
the respondent attempts to pass itself off as the complainant online, which is
blatant unauthorized use of the complainant’s mark and is evidence that the
respondent has no rights or legitimate interests in the disputed domain name);
see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007)
(“Because [the] respondent in this case is also attempting to pass itself off
as [the] complainant, presumably for financial gain, the Panel finds the
respondent is not using the <mortgageresearchcenter.org> domain name for
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that the <havaianasmy.com> domain name redirects Internet users seeking its products to Respondent’s competing website. The Panel finds Respondent uses the disputed domain name to operate a website that offers counterfeit goods that directly compete with Complainant’s legitimate goods. Therefore, the Panel finds Respondent’s use disrupts Complainant’s business, which constitutes bad faith under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant claims Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. As previously discussed, Respondent uses a confusingly similar domain name in an attempt to profit from the sale of counterfeit goods. Therefore, the Panel agrees with Complainant’s assertion and finds this behavior provides further evidence of bad faith under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Finally, Complainant claims that Respondent’s use of the <havaianasmy.com> domain name to attempt to pass itself off as Complainant’s official website consitutes bad faith. The Panel concurs and finds that this use also constitutes bad faith pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <havaianasmy.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 13, 2010
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