WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Benetton Group S.p.A. v. Azra Khan
Case No. D2002-0810
1. The Parties
Complainant is Benetton Group S.p.A., represented by Mr. Luca Barbero, c/o Studio Barbero, Via Tripoli 104, 10137 Torino, Italy, hereinafter the "Complainant."
Respondent is Azra Khan, P.O. 382, Rawalpindi 46000 Pakistan, hereinafter the "Respondent."
2. Domain Name and Registrar
The domain name in dispute is <unitedcolorsofbenetton.com>, hereinafter the "Domain Name."
The registrar for the disputed domain name is DotRegistrar.com, a division of iHoldings.com, Inc, 13205 SW 137th Ave, Suite #133, FL 33186, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a Complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on August 29, 2002. On August 30, 2002, WIPO sent an Acknowledgement of Receipt of Complaint to the Complainant.
(b) On August 30, 2002, WIPO transmitted a Request for Registrar Verification to the registrar, with the Registrarís Verification received by WIPO on August 30, 2002, confirming that the domain name at issue was registered through DotRegistrar.com.
(c) On September 3, 2002, WIPO transmitted a Complaint Deficiency Notification to the Complainant, and the Complaintís Amendment was received by WIPO on September 5, 2002.
(d) On September 9, 2002, WIPO transmitted a Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent, after having satisfied itself that the Complainant had complied with all formal requirements pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for the Policy approved by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for the Policy ("the Supplemental Rules").
(e) No Response has been submitted by the Respondent. Accordingly, WIPO issued a Notification of Respondent Default on October 1, 2002.
(f) In view of the Complainantís designation of a single Panelist, WIPO invited Mr. Peter Nitter to serve as a Panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence, WIPO formally appointed him as Single Panelist. The parties were notified of the Appointment of Administrative Panel on October 11, 2002.
(g) The Single Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.
4. Factual Background
Complainant is a company established in Italy in 1965, and organized as a limited public company in 1978. The Benetton Group is now present in 120 countries around the world. The Groups commercial network of 5.000 retail outlets around the world is increasingly focused on large floor-space mega stores offering high quality customer services and now generates an annual turnover of more than 4,000 billion lire, net of retail sales.
The Benetton Group is active in Pakistan through a number of shops.
Complainant has presented copies of trademark registrations of the marks Benetton, 012 Benetton and United Colors of Benetton in Pakistan, and a register showing trademark registration in several other countries.
Complainant has registered and uses among others the domain name <benetton.com> for their services.
The Respondent has registered the domain name <unitedcolorsofbenetton.com>.
On July 8, 2002, Complainant sent a letter to Respondent by e-mail, requesting that the Respondent ceased the use of the Domain Name, and the transfer of the Domain Name to Complainant. A reminder was sent on August 27, 2002. The Respondent did not reply to the Complainantís communications.
5. Partiesí Contentions
The Complainant asserts that:
The Domain Name is identical to a trademark in which the Complainant has rights.
The Respondent has not provided to Complainant with any evidence of its use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services before any notice of the dispute. Upon information and belief, the Respondent is not commonly known by the Domain Name, as an individual, business or organization.
The Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainantís trademark.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
In view of the international reputation of the Complainantís trademark and the use also in Pakistan, the Respondent could not have ignored the existence of the trademark registration identical or at least confusingly similar to the Domain Name.
The Respondentís registration of the Domain Name prevents the Complainant from reflecting its trademark into a corresponding domain name. The Respondent is clearly engaged in pattern of such conduct since at least three other domain names, identical or confusingly similar to a trademark registration, were registered by the Respondent, and all of them transferred to the Complainant pursuant to the UDRP.
Furthermore, considering the present use of the Domain Name where gambling activities are offered and advertised, the Respondent undoubtedly attracts, for commercial gain, Internet users to a website exploiting the likelihood of confusion with the Complainantís trademark as to the affiliation, sponsorship or endorsement of such a website.
The Complainant requests the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
The Respondent has not submitted a response, and is thus in default. Respondent has neither made any submissions after the Notification of Respondent Default.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests that a Complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
6.1 Identical or Confusingly Similar to a Trademark or a Service Mark in which the Complainant has rights
Based on the evidence, the Panel finds that the Complainant has rights to the trademark United Colors of Benetton.
The Domain Name at issue is <unitedcolorsofbenetton.com>.
The Panel considers that, as found in several earlier Panel decisions, the suffix .com does not influence on the consideration of similarity.
The Panel finds that the Domain Name is identical to the Complainantís trademark..
6.2 Rights or Legitimate Interests in the Domain Name
The Panel has considered the allegations by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the Domain Name.
The Complainant has not licensed, contracted or otherwise permitted Respondent in any way to use their trademark or to apply for any domain name incorporating the mark.
The Panel agrees that there is no evidence showing that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with at bona fide offering of goods or services. There is no evidence to show that the Respondent is or has been commonly known by the Domain Name.
As a result of default, the Respondent has not contested the allegations put forward by the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
6.3 Registration and Use in Bad Faith
The Panel has considered Complainantís allegations and evidences with regard to the Respondentís registration and use of the Domain Name in bad faith.
Complainant has put forward evidence that his trademarks are well known, and the Panel finds that the trademarks of the Complainant must have been known to Respondent when registering the Domain Name.
Given the Complainantís numerous trademark registrations and its wide reputation with connection with the mark United Colors of Benetton, it is also hard to conceive that the Respondent could legitimately use the Domain Name.
It is not likely that any trader would choose a name including the trademark United Colors of Benetton if not to create an impression of association with the Complainant.
The Respondentís registration of the Domain Name prevents the Complainant from reflecting its trademark into a corresponding domain name. Respondent has registered other domain names consisting of variations of well-known trademarks, without being able to establish rights to any of them when contested under the UDRP. The Panel agrees with the Complainant that this shows a pattern of bad faith conduct.
The Panel also agrees that by advertising and offering gambling activities, the Respondent attracts, for commercial gain, Internet users to its website by exploiting the likelihood of confusion with the Complainantís trademark as to the affiliation, sponsorship or endorsement of the website.
By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the Domain Name in bad faith.
Based on the above discussion, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
The Panel has found that the Domain Name <unitedcolorsofbenetton.com> is identical to a trademark held by the Complainant, and that the Respondent has no rights to or legitimate interest in the Domain Name. The Panel further finds that the Domain Name has been registered in bad faith, and that it is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that the Domain Name <unitedcolorsofbenetton.com> be transferred to the Complainant.
Peter G. Nitter
Dated: October 25, 2002