WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agnona S.p.A. v. Mr. Lian Ming
Case No. D2003-0389
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, Italy.
2. The Domain Name and Registrar
The domain name at issue is <agnonalanerie.com>. The registrar is eNom.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a Complaint (hereinafter the Complaint) by email on May 21, 2003, and in hardcopy on May 23, 2003. On May 22, 2003, the Center transmitted via email to eNom, a request for registrar verification in connection with this case.
On May 29, 2003, eNom transmitted by email to the Center the Verification Response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact.
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"). The 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 June 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 3, 2003.
The Center appointed Andrea Mondini as the sole Panelist in this matter on July 3, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
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 Italian trademark registration No. 00678357 "Agnona Lanerie" first filed on May 11, 1954, and duly renewed thereafter.
According to the Uwhois database, the domain name <agnonalanerie.com> was registered on April 23, 2003.
The almost identical domain name <agnona-lanerie.com> was the object of WIPO Case No. D2003-0296 between the same Complainant and Respondent. In that case, the Panel ordered in its decision of June 5, 2003, that the domain name <agnona-lanerie.com> be transferred to the Complainant.
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 trademark 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 alleges that the domain name <agnonalanerie.com> is confusingly similar to 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, the fact that Respondent operates in bad faith is proved by his registration of several other domain names identical to or confusingly similar to 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.
Complainant alleges that 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 <agnonalanerie.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 filed an e-mail dated May 2, 2003, in which Respondent, upon receipt of the Notification of Complaint in WIPO Case No. D2003-0296, stated in essence that it also obtained the domain name <agnonalanerie.com> and offered to sell it for 10.000 Euro (Annex 16 to the Complaint). The Complainant contends that this is evidence of bad faith.
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, as the Panelist stated in WIPO Case No. D2003-0296, 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 WIPO Case No. D2003-0296 the Panelist held that the Complainantís trademark and trade name is to be considered well-known, at least in Italy where the Respondent is based, and assumed 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. In the present case, the Respondent obviously was aware of the Complainantís trademark, since upon receipt of the Complaint in WIPO Case No. D2003-0296 regarding the domain name <agnona-lanerie.com> he went on to register also the domain name <agnonalanerie.com> and offered to sell it to Complainant for 10.000 Euro (Annex 16).
There is evidence in the record that Respondent is engaging in a pattern of such a conduct as it has registered, in addition to <agnona-lanerie.com> and<agnonalanerie.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 as <jaegermeister.it> (Annexes 9-14 to the Complaint).
In view of the fact that Respondent, upon receipt of the Complaint in WIPO Case No. D2003-0296 regarding the domain name <agnona-lanerie.com>, went on to also register the disputed domain name <agnonalanerie.com> and offered to sell it to Complainant for 10.000 Euro (annex 16), the Panel finds that the Respondent registered and used the disputed domain name in bad faith, according to paragraph 4(a)(iii) of the ICANN Policy.
For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <agnonalanerie.com> be transferred to the Complainant.
Dated: July 9, 2003