WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Benetton Group S.p.A. v. Wonil Park
Case No. D2002-0577
1. The Parties
The Complainant is Benetton Group S.p.A., an Italian company with registered offices in Villa Minelli, 31050 Ponzano Veneto (Treviso), Italy. The Complainant is represented by Mr. Luca Barbero, Studio Barbero, Via Tripoli 104, 10137 Torino, Italy.
The Respondent is Wonil Park, 20/8 135-31 Garibong 1dong Guro-Gu, Seoul, Republic of Korea.
2. The Domain Name and Registrar
The domain name at issue is <benetton.net> (the "Domain Name"). The Registrar is iHoldings.com Inc. d/b/a DotRegistrar.com, 13205 SW 137th Ave, Suite #133, Miami, FL 33186, United States of America.
3. Procedural History
The Complainant filed a Complaint by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on June 21, 2002. On June 25, 2002, the Center received a hard copy of the Complaint, with supporting evidence.
On June 23, 2002, a Request for Registrar Verification was transmitted to the Registrar, which confirmed, on June 24, 2002, that it had received a copy of the Complaint, that the Domain Name was registered with it, and that the Respondent was the current registrant of the Domain Name. The Registrar also confirmed that the Domain Name, which was due to expire on June 28, 2002, would remain locked during the proceeding. The Registrar transmitted to the Center the full whois details related to the Domain Name.
On June 27, 2002, the Center reviewed the Complaint to verify that it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").
The Sole Panelist has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Policy, the Rules and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
On June 27, 2002, the Center notified the Respondent by courier and e-mail, in accordance with Paragraph 2(a) of the Rules, of the commencement of this proceeding and set July 17, 2002, as the last day for the submission of a Response.
The Center did not receive a Response from the Respondent. On July 18, 2002, the Center issued a Notification of Respondent Default, which was sent by e-mail to the Parties. On the same day, the Center received a short e-mail from the Respondent. On July 22, 2002, the Center asked the Respondent whether his e-mail was a formal response. The Respondent did not reply to this query.
By e-mail dated July 23, 2002, the Complainant filed additional materials, consisting of an exchange of e-mails between the parties, dated June 23-24, 2002.
On July 25, 2002, the Center invited Mr. Fabrizio La Spada to serve as Sole Panelist. On July 26, 2002, Mr. La Spada confirmed that he was able to serve as Sole Panelist. On July 29, 2002, the Center received Mr. La Spada's Statement of Acceptance and Declaration of Impartiality and Independence. On the same day, the Center appointed Mr. La Spada as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date, which was communicated by e-mail to the Parties. The Center set August 12, 2002, as the Projected Decision Date.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
4. Factual Background
The Benetton Group is a group of companies operating in the clothing, sportswear and equipment sectors throughout the world. It notably operates under the "United Colors of Benetton" brand. The Benetton Group is present in Korea through the company Benetton Korea Inc..
The Complainant is part of the Benetton Group. It owns several trademarks consisting of or containing the word "BENETTON", registered in South Korea in several classes, including classes 18, 25, 27. Goods for which trademark protection is claimed include, e.g., dress coats, shoes, printing ink, and mugs. Trademarks containing the word "BENETTON" have been registered in South Korea as early as 1991. The Complainant's trademarks "BENETTON" and "UNITED COLORS OF BENETTON" have been extensively advertised worldwide.
The Respondent registered the Domain Name with the Registrar on June 28, 2001.
The Respondent set up a web site, accessible by the Domain Name, which, at the time the Complaint was filed, contained ad banners and the following statement :
"Welcome to Our Home Page.
We regret it very deeply that We couldn't operate this site any longer.
Because We have failed to get second seeds money.
Thanks for the bottom of my heart to my loving customers and business partners.
This Name has Good Business Opportunity for Your Future and currency Business.
It was Give Careful Consideration to my loving Customers and Business Partners
In addition, upon accessing the web site related to the Domain Name, pop-up windows open, which feature third-party web sites on which products and services are advertised and offered.
On April 21, 2002, Complainant's counsel sent a cease and desist letter to the Respondent, by e-mail and registered mail. The letter was returned to its sender with the mention "unknown" stamped on the envelope. The Respondent did not reply to the e-mail.
5. Parties’ Contentions
The Complainant alleges that it is the owner of six "BENETTON" trademarks registered in South Korea in the year 2000, as well as nine "UNITED COLORS OF BENETTON" trademarks registered in South Korea between 1990 and 2000. These trademarks are registered in several classes, including 3, 9, 16, 18, 20, 21, 25, 26, 28, and 35. The Complainant further states that it is the owner of numerous registered trademarks containing the word "BENETTON" all over the world.
The Complainant asserts that the Benetton Group, operating in the clothing, sportswear and equipment sectors, is present in 120 countries and has a commercial network of 5'000 retail outlets around the world, generating an annual turnover of more than 4'000 billion Italian liras. The Complainant points out that there exist approximately forty authorized BENETTON shops in Seoul, South Korea.
The Complainant submits that the "BENETTON" trademark is supported worldwide, including in South Korea, by extensive advertising campaigns, and that it enjoys an international reputation and is well-known in many countries. According to the Complainant, the "BENETTON" trademark "probably qualifies" as a well-known trademark for the purpose of Article 6bis of the Paris Convention 1883.
The Complainant submits that the Domain Name is identical to the BENETTON trademark.
It also alleges that the Respondent registered the Domain Name without authorization from the Complainant and has no rights or legitimate interests to use such Domain Name. The Complainant argues that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services and is not commonly known by the Domain Name as an individual, business or other organization. According to the Complainant, the Respondent is "misleadingly diverting Internet users seeking information on a different well known company attracting them to a web site where different commercial activities are advertised."
The Complainant further submits that the Respondent has registered and uses the Domain Name in bad faith. According to the Complainant, the Respondent could not have ignored the existence of the trademark registration at the time he registered the Domain Name, in the light of the international reputation and intense use of the "BENETTON" name in South Korea. Moreover, the Complainant contends that the Respondent attracts, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's trademark as to the affiliation, sponsorship or endorsement of the web site by the Complainant.
Finally, the Complainant sets out four circumstances it alleges are indicia of registration and use in bad faith : (a) wording on the Respondent's web site hints to the availability of the Domain Name for use by third parties or for sale; (b) the Complainant cannot conceive of any legitimate active use of the Domain Name; (c) the Respondent has failed to respond to correspondence sent by the Complainant; and (d) the Respondent probably provided false contact details, since letters sent to his address were returned to sender.
On these basis, the Complainant seeks the transfer of the Domain Name.
The Respondent has not submitted a Response within the timeframe set by the Center. However, after the issuance of the Centers' notice of default, the Respondent sent an e-mail containing the following statement :
"Well as I said before, I don't need this domain name and when I registered this domain name, it was not registered and besides I just liked that brand and so I registered it. That's all. If you want this domain, take it.
I do not need this domain name!
The Center asked the Respondent to confirm whether this was to be considered as a formal Response. The Respondent did not reply.
The Respondent's statement has been filed on the day following expiration of the deadline set by the Center. The Panel nevertheless considers that it shall be taken into consideration in deciding this case.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements are satisfied :
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and
2. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 6.2); and
3. The Domain Name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) in fine of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
The Sole Panelist notes that, pursuant to Paragraph 15(a) of the Rules, it shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
6.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in Which Complainant has Rights ?
This question raises two issues : (1) does the Complainant have rights in a trademark or service mark; and (2) is the Domain Name identical or confusingly similar to such trademark or service mark.
As regards the first question, the Complainant has produced evidence that it is the owner of fifteen South Korean trademarks consisting of, or containing, the word "BENETTON". These trademarks include, e.g., "BENETTON" trademark No. 464153, registered on January 28, 2000, for products of the class 25; and "UNITED COLORS OF BENETTON" trademark No. 197202, registered on July 26, 1990. Several of the documents produced by the Complainant are written in Korean language and are not accompanied by an English translation. However, the documents produced, some of which are written in English as well as in Korean, are sufficient to establish that the Complainant owns at least one registered "BENETTON" trademark.
As to the second question, the Sole Panelist finds that the Domain Name is identical to the trademark "BENETTON", taking into account the fact that the suffix ".net" is not distinctive.
The Sole Panelist therefore finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name ?
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent did not dispute this contention nor provide information as to its interests in the Domain Name; he only stated that he registered the Domain Name because he liked the brand, but does not need it.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements :
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
On the basis of the statements and documents submitted, the Sole Panelist is satisfied that the Respondent has no rights or legitimate interests in the Domain Name.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Domain Name points to a web site which only contains a statement that no products or services are offered, as well as third-party ad banners and pop-up windows for domain name registration, web site hosting services, and other products and/or services, unrelated to the Respondent and to the BENETTON name. Moreover, there are no elements showing that the Respondent is or was commonly known by the Domain Name. Finally, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name.
In accordance with the elements set out above, the Sole Panelist finds that the Respondent has no rights nor legitimate interests in respect of the Domain Name.
6.3 Is There Evidence of Registration and Use of the Domain Name in Bad Faith ?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith circumstances in which :
"by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
For the reasons set out below, the Sole Panelist is satisfied that the Respondent has registered and used the Domain Name in bad faith.
It is outside the scope of this proceeding to decide whether the Complainant's trademark qualifies as a well-known mark under the Paris Convention. However, there is sufficient evidence to establish that the "BENETTON" trademark has a worldwide reputation in relation to clothing. Moreover, this trademark has been extensively advertised and used in Korea. The Panel considers that the Respondent must have been aware of the existence of the Complainant and of its rights in the "BENETTON" trademark at the time he registered the Domain Name. This finding is further supported by the Respondent's statement in the proceeding that he registered the Domain Name because he liked the "BENETTON" brand. As prior panels have held, registration of a well-known mark may be an indicia of bad faith where there is no justification for the registration (see, e.g., Estee Lauder Cosmetics Ltd; Make-Up Art Cosmetics Inc. v Telmex Management Services, WIPO Case No. D2001-1428 (February 8, 2002) and cases cited ; Reuters Ltd. v. Teletrust IPR Ltd, WIPO Case No. D2000-0471 (September 8, 2000)).
In addition, there is no justification in the statements and documents submitted for the use of the Complainant's trademark in the Domain Name, other that the attempt to attract Internet users to the Respondent's web site and other on-line locations, by creating initial confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site. The question in this case is whether Internet users are attracted "for commercial gain". Indeed, the Respondent is not offering products or services on his web site. Moreover, there is no evidence of any commercial gain for the Respondent arising out of the ad banners that are posted on the web site.
Nevertheless, the Sole Panelist considers that Internet users are attracted to the web site, and to other on-line locations, for commercial gain. Indeed, upon accessing the web site related to the Domain Name, a third-party window automatically opens, on which products and/or services are advertised and offered for commercial gain. Moreover, the Respondent's web site contains a statement indicating that the Domain Name has "Good Business Opportunity". Although this alone would not be sufficient to support a finding of bad faith, it is a further element showing that the Respondent intends to derive a commercial benefit from the Domain Name and the traffic generated by the confusion with the Complainant's trademark.
Finally, it should be noted that the Respondent did not dispute the Complainant's allegations that he registered the Domain Name and was using it in bad faith. On the contrary, he clearly stated that he did not need the Domain Name and invited the Center to "take it".
Therefore, the Sole Panelist finds that the Domain Name was registered and is being used in bad faith.
On the basis of the elements set out above, the Sole Panelist finds that :
1. The domain name <benetton.net> is confusingly similar to trademarks in which the Complainant has rights;
2. The Respondent does not have any rights or legitimate interests in respect of the Domain Name;
3. The Domain Name was registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name (<benetton.net>) be transferred to the Complainant.
Fabrizio La Spada
Dated: August 12, 2002