WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agnona S.p.A. v. Mr. Lian Ming
Case No. D2003-0296
1. The Parties
The Complainant is Agnona S.p.A., Vercelli, of Italy, represented by Studio Legale Jacobacci e Associati of Italy.
The Respondent is Mr. Lian Ming, Torino, of Italy.
2. The Domain Name and Registrar
The domain name at issue is <agnona-lanerie.com>. The registrar is Tucows.com, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a Complaint (hereinafter the Complaint) by email on April 16, 2003, and in hardcopy and exhibits on April 22, 2003. On April 16, 2003, the Center transmitted via email to eNom, a request for registrar verification in connection with this case.
On April 17, 2003, eNom transmitted via email to the Center, the Verification Response, confirming that the registrant is Lian Ming and that the domain name registration is in "active" status.
The Center verified that the Complaint satisfied the formal requirements of the 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"). Complainant made the required payment to the Center.
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 April 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on May 19, 2003.
On May 20, 2003, in view of the Complainantís designation of a single member panel the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with the Rules, paragraph 7, the Center transmitted on May 22 to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
Therefore, the Panel shall issue the Decision on the basis of the Complaint, the Policy, the Rules, the Supplemental Rules and any rules and principles of law deemed applicable, without the benefit of any Response from Respondent.
4. Factual Background
The Complaint is based on the trademark registration No. 00678357 "Agnona Lanerie" first filed on May 11, 1954, and duly renewed thereafter.
The respondent registered the domain name <agnona-lanerie.com> on September 24, 1999.
5. Partiesí Contentions
Complainant states that AGNONA LANERIE is an internationally well-known company in the field of wool, and the owner of more than 50 trademarks including the words AGNONA and AGNONA LANERIE, the oldest of them dating back to 1954. In order to limit the number of enclosures the Complainant has provided the panel with a full listing of trademark registration and actual copies of three trademarks certificates which the Panel consider sufficient for the purpose of the present procedure. The Complainant explains that although it is incorporated as Agnona S.p.A., it also trades under the names "Agnona Lanerie" and "Lanerie Agnona" providing the panel with additional evidence of such use and indicating that "Lanerie" means wool factory in Italian.
The Complainant highlights that the domain name <agnona-lanerie.com> is confusingly similar with the trademarks and trade names AGNONA, AGNONA LANERIE and LANERIE AGNONA owned by Complainant. According to the Complainant, there is no way that Respondent may not have been aware of the famous trademark and trade name AGNONA / AGNONA LANERIE, and registration may only have occurred in bad faith.
The Complainant contends that in the present procedure, evidence of bad faith is, in itself, the association between the words AGNONA and LANERIE, since Respondent, located as he is in Italy, cannot conceivably ignore that AGNONA was the name of a well-known wool factory ("lanerie" in Italian). Additionally, that Respondent operates in bad faith is proved by his registration of several other domain names identical to, or confusingly similar with, well-known trademarks, such as <jaegermeister.it>, <ermenegildo-zegna.net>, <ferrari-scuderia.com>, <kinder-ferrero.com>, <icebergclothings.com>, providing the panel with evidence of said domain names registrations.
As stated by the Complainant, Respondent has no rights or legitimate interests in respect of the domain name since there is no evidence, before the dispute, of the Respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Furthermore, the Respondent, upon information and belief, has never been commonly known by the domain name, nor did he do business under the domain name and there is no evidence that Respondent is making a legitimate non-commercial or fair use of the domain name.
The Complainant asserts that the domain name is used in bad faith in light of the fact that the default page of <agnona-lanerie.com> resolves in the publicity for various services. Neither did Complainant authorised Respondentís activities, nor does it control them. Complainant has no control of what Respondent currently includes, or will include in the future, in its Website. By the use of the contested domain name Respondent also diverts traffic which would otherwise go to Complainantí Websites which promote genuine AGNONA / AGNONA LANERIE products.
The Complainant informs the Panel that on March 22, 2003, Ms. Daniela Bovolenta, a consultant acting on behalf of Agnona S.p.A., asked the Respondent whether "he would be interested in selling the domain name <agnona-lanerie.com>". Respondent answered the same day that: "the answer is: for Ä 30,000, with a narrow margin for negotiation" providing the Panel with copy of such a correspondence.
Respondent has not contested the allegations of the Complainant and is in default.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Domain Name Identical or Confusingly Similar
The Complainant has provided evidence of ownership of the trademark registration No. 00678357 "AGNONA LANERIE" first filed on may 11, 1954, and duly renewed thereafter as well as a number of International and National registrations for the trademark AGNONA LANERIE
In view of the above, the Panel finds that the Complainant has proved that the domain name is identical, obviously but for the suffix ".com" which is instrumental for the use in Internet, to the trademarks of the Complainant according to paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and Legitimate Interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) that he has made 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 prior to the dispute;
(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark..
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name.
Furthermore, there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor the Respondent has otherwise obtained an authorization to use Complainantís trademark and name under any circumstance.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the domain name, according to paragraph 4(a)(ii) of the ICANN Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderí s website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.
In light of the fact that the Complainantís trademark and trade name is to be considered well-known, at least in Italy where the Respondent is based, the Panel assumes that the Respondent knew or should have known of such a trademark at the time of registration and therefore the domain name was registered in bad faith. The Panel shares the view of a number of Panel findings of "opportunistic bad faith" in the registration of renown or even somewhat less famous trademark e.g. Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., (WIPO Case No. D2000-0163), Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, (WIPO Case No. D2000-0226), Expedia, Inc. v. European Travel Network, (WIPO Case No. D2000-0137) Prada S.A. v. Mark O'Flynn (WIPO Case No. D2001-0368), Ferrari S.p.A. v. Inter-Mediates Ltd. (WIPO Case No. D2003-0050), The Nasdaq Stock Market, Inc. v. Act One Internet Solutions (WIPO Case No. D2003-0103).
Panel finds paragraph 4(a)(ii) of the Policy applicable in the instant case since the Respondent is preventing the rightful owner of a trademark from reflecting the mark in a corresponding domain name, and the Respondent is to be considered as engaged in a pattern of such a conduct as it has registered, in addition to <agnona-lanerie.com>, a number of other domain names identical or confusingly similar to third parties trademarks, such as: <ermenegildo-zegna.net>, <ferrari-scuderia.com>, <kinder-ferrero.com>, <icebergclothings.com> and as well the ccTLD <jaegermeister.it>.
Panel finds paragraph 4(a)(iv) of the Policy also applicable to the present procedure since, as indicated by the Complainant, the domain name pointed, and indeed is presently pointing, to a page where various services are advertised. Therefore, the site may have attracted Internet users seeking information about the Complainantís products and is likely to create confusion as to the source, sponsorship, affiliation or endorsement by the Complainant corroboratig the use of the domain name in bad faith.
The Respondent addressed to one of the consultants of the Complainant a request of Ä 30,000 "with a narrow margin for negotiation" for the assignment as a reply to the explicit request if he would be interested in selling the Domain Name. Even though some Panels pointed out that offers made within the context of settlement discussions should be barred from evidentiary consideration and indeed the Panel agrees that the mere fact that one offered to settle a matter by the payment of money should not be used as an admission of liability, the Panel finds that, unless the Respondent can establish that it has rights to or legitimate interests in the Domain Name - as found e.g. in Avnet, Inc. v. Aviation Network, Inc., (WIPO Case No. D2000-0046) -, in procedures according to the ICANN Policy an offer to sell a domain name, particularly if identical to a well-known trademark, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that, the domain name has been registered and is being used in bad faith. See CBS Broadcasting, Inc. v. Gaddoor Saidi (WIPO Case No. D2000-0243).
In view of the above, the Panel finds that the Respondent registered and used the domain name in bad faith, according to paragraph 4(a)(iii) of the ICANN Policy.
In light of the foregoing, the Panel decides that a) the domain name registered by the Respondent is identical to the Complainant's trademarks, that b) the Respondent has no rights or legitimate interests in respect of the domain name and c) that the domain name has been registered and used in bad faith.
Accordingly, the Panel requires that the registration of the domain name <agnona-lanerie.com > be transferred to the Complainant.
Dated: June 5, 2003