WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fitbit, Inc. v. 韦春秀 (Wei Chun Xiu)

Case No. D2020-0340

1. The Parties

The Complainant is Fitbit, Inc., United States of America (“U.S.”), represented by Fenwick & West, LLP, U.S..

The Respondent is 韦春秀 (Wei Chun Xiu), China.

2. The Domain Name and Registrar

The disputed domain name <xinfibbit.store> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2020. On February 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On February 18, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on February 20, 2020. The Respondent did not comment on the language of the proceeding.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2020.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on March 25, 2020. 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 an American company active in the health and fitness technology industry, with its headquarters in San Francisco, California. It specializes in developing and providing electronic multifunctional tracking devices, smartwatches, scales, related fitness and health mobile software, an online platform “www.fitbit.com” and various health services. The Panel notes that the Complainant’s business has achieved global success and attracted significant media coverage.

The Complainant owns a large portfolio of trademarks for FITBIT and its variations worldwide, including, for example, Chinese trademark registration number 13943123, registered on September 28, 2016, and U.S. trademark registration number 3732334, registered on December 29, 2009. The disputed domain name was created on November 4, 2019. The Complainant submits evidence that the disputed domain name directed to a website that purported to be the Complainant’s “Official Online Store” and imitated the Complainant’s official website (“www.fitbit.com”) by using its trademarks and images and claiming to sell the Complainant’s products at a significant discount. On the date of this decision, the disputed domain name leads to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for FITBIT, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are famous and used intensively. The Complainant particularly submits that there are no justifications for the use of its trademarks in the disputed domain name, and contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith. Moreover, the Complainant claims that the disputed domain name is a clear case of typosquatting, which can be indicative of it being confusingly similar to the Complainant’s trademarks.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the administrative proceeding

Pursuant to paragraph 11(a) of the Rules, 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.

The Complainant states that to its best knowledge the language of the Registration Agreement is Chinese, and filed its Complaint in English, containing a request that language of the proceeding be English. On February 18, 2020, the Center notified the Complainant that the language of the Registration Agreement is Chinese. The Complainant confirmed its request that the language of proceeding be English on February 20, 2020. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of proceedings be English; the fact that the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while it had the right to do so in Chinese or English); the fact that the disputed domain name directed to a website in English (before it was taken offline, which shows the Respondent has sufficient ability communicating in English); and the fact that Chinese as the language of proceeding could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceeding shall be English.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain name is identical 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; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark FITBIT based on its intensive use and registration of the same as a trademark globally.

Moreover, as to confusing similarity of the disputed domain name with the Complainant’s marks, the disputed domain name consists of the Complainant’s FITBIT trademarks, from which the third letter “t” is replaced by the letter “b”. The Panel concludes that this replacement is an obvious misspelling of a trademark, which preserves the conceptual, phonetic and visual similarity with the Complainant’s FITBIT marks. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.9, “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.

Further, the disputed domain name also consists of the term “xin”, which is Chinese pinyin and could be translated to “new” in English. This is a descriptive term and could not distinguish the disputed domain name from the Complainant’s marks. Additionally, the applicable Top-Level Domain (“.store” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview 3.0, section 1.11.1. Therefore, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademarks, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Moreover, the Panel notes that the disputed domain name directed to a website that purported to be the Complainant’s “Official Online Store” and imitated the Complainant’s official website by using its trademarks and images and claiming to sell the Complainant’s products at a significant discount (before it was taken offline). This shows the Respondent’s intention to divert consumers for commercial gain to its website linked to the disputed domain name, by taking unfair advantage of the goodwill and reputation of the Complainant’s trademarks for FITBIT.

Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks, and using “.store” as the Top-Level Domain, carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), the Respondent is also not commonly known by the disputed domain name.

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

Given the global reputation and fame of the Complainant's trademarks, the registration of the disputed domain name, which incorporates such trademarks (be it with an intentional misspelling), is clearly intended to mislead and divert consumers to the disputed domain name. The Panel finds that the registration of the disputed domain name with the intentional misspelling of the Complainant’s trademarks (typosquatting) by the Respondent, who is entirely unaffiliated with the Complainant, is by itself evidence of bad faith of the Respondent (see in this regard also Randstad Holding nv v. Pinaki Kar, WIPO Case No. D2013-1796).

Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in FITBIT and used them extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the disputed domain name directed to a website that purported to be the Complainant’s “Official Online Store” and imitated the Complainant’s official website by using its trademarks and images and claiming to sell the Complainant’s products at a significant discount (before it was taken offline). This indicates the Respondent’s clear bad faith in freeriding the Complainant’s trademarks and reputation to attract Internet users for the Respondent’s commercial gain. However, on the date of this decision, the disputed domain name links to an inactive webpage. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”.

The Panel has reviewed all elements of the case at hand, and attaches particular importance to the following: the fact that the only distinctive element in the disputed domain name is the misspelling of the Complainant’s trademark; the fact that the Respondent clearly intended to mislead consumers into believing that the disputed domain name led to an official shop for the Complainant’s products by selecting the disputed domain name with the Top-Level Domain “.store”; the use of the website linked to the disputed domain name (before it was taken offline) as an e-commerce website selling allegedly genuine FITBIT products; and the unauthorized use on such website of the Complainant’s product and marketing images protected by copyright. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 disputed domain name <xinfibbit.store> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: April 8, 2020