WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jil Sander AG v. Mr. Salvatore Tramacere
Case No. D2003-0768
1. The Parties
The Complainant is Jil Sander AG, Hamburg, Germany, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Mr. Salvatore Tramacere, Milano, Italy.
2. The Domain Name and Registrar
The disputed domain name <jilsander.info> (the "Domain Name") is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2003. On September 30, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On October 7, 2003, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its 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").
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 October 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2003.
The Center appointed Dr. Thomas Legler as the Sole Panelist in this matter on November 11, 2003. 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 Jil Sander AG, a German fashion company, distributing its fashion products created by the designer Heide-Marie Sander. The Complainant submits evidence according to which it is the owner of the trademark JIL SANDER (in some cases, the trademark has been assigned from Mrs. Sander to Jil Sander AG) in various form, i.e. as wordmark, logo, combined mark and in different versions like "Jil Sander", "Sander", "Sphera by Jil Sander", "Spirit of Jil Sander", etc.
Many trademarks have also been registered in Italy, the domicile of Respondent, among other the logo "Jil Sander" in 1983 and the respective word mark in 1984.
The Domain Name was registered by the Respondent on July 4, 2003.
Nothing is known about the Respondent, since it did not file any Response for the Administrative Procedure. As Complainant's evidence shows, the Respondent must be active in the field of web-based pornographic offerings, accessible via the disputed domain name.
5. Parties’ Contentions
The Complainant indicates that the domain name <jilsander.info> is confusingly similar with the trademark "Jil Sander", with the trade name of Complainant and with the personal nickname of Ms. Heide-Marie Sander, well known as a fashion designer.
The Complainant adds that the Respondent has no rights or legitimate interests in respect of the Domain Name, since there is no evidence of the Respondent's 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. Moreover, the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name "Jil Sander" and finally the Respondent uses the Domain Name for a commercial purpose without any non-commercial or fair use.
Respondent must have been aware of the trade name, trademark and personal name "Jil Sander" so that the registration may only have occurred in bad faith. The title tag quotation "Le modelle di Jil Sander nude" ("The naked models of Jil Sander") is evidence enough that Respondent specifically referred to the fashion company "Jil Sander" when it registered the Domain Name. Furthermore, the Respondent seems to be a specialist in registering domain names corresponding to well known trademarks of international fashion companies as evidenced by three other procedures involving Respondent with regard to the Italian fashion company "Zegna". The Complainant stresses that the Respondent is also using the Domain Name in bad faith, since the default page of the domain name resolves to a pornographic page depicting female sexual organs and selling various services connected with pornography under the aforementioned title. Pursuant to Complainant the consequences are potentially catastrophic should even a minority of Internet users come to believe that Complainant's prestigious fashion company would be associated with this kind of pornography. The Complainant refers to various WIPO precedents where it has been hold that the redirection to pornographic sites from a domain name incorporating the trademark of another company is per se evidence of bad faith.
The Complainant concludes that the Domain Name shall be transferred to Complainant.
As indicated above, the Respondent did not file any Response.
6. Discussion and Findings
Paragraph 4 (a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
(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.
A. Identity or confusing similarity with a mark in which the Complainant has rights
Based on the documents submitted by the Complainant, the trademark "JIL SANDER" has been registered in many countries, among other in Italy, where the Respondent is domiciled. The Panel is of the opinion that the trademark "JIL SANDER" has to be considered as a well known trademark.
The Domain Name is identical to Complainant's trademark.
B. Legitimate Right or Interests in respect of the domain name
Pursuant to paragraph 4 (c) of the Policy, any of the following circumstances may demonstrate the Respondent's rights of legitimate interests to the domain name for purposes of paragraph 4 (a) (ii) :
(i) before any notice of the dispute, the Respondent's use 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for a commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Under the given circumstances, the Panel has to verify whether the Respondent is using the Domain Name in connection with a bona fide offering of goods or services in the sense of paragraph 4 (c) (i) of the Policy.
Running an adult sex site is in itself legal, even if it may be seen by some people as morally questionable. From this point of view, it may constitute a bona fide offering of goods or services (see Motorola Inc. vs. Newgate Internet Inc., WIPO Case No. D2000-0079). However, in the present case, the Respondent uses a well known trademark as domain name for its website. Such use cannot be considered as bona fide. Moreover, the Panel has no indication of Respondent's actual intentions, when choosing and registering the domain name, since Respondent did not file a Response.
Regarding paragraph 4 (c) (ii) of the Policy, the Panel notes that the Respondent's name is "Salvatore Tramacere" and that he can therefore not be "commonly know by the domain name". Moreover, the Respondent did not submit any evidence that he is the owner of a company having the Domain Name as its corporate name and that it is commonly know by such name.
Consequently, the Panel is of the opinion that the Respondent has no rights or legitimate interests in the sense of paragraph 4 (c) of the Policy.
C. Registration and use in bad faith
The Panel first holds that there are no circumstances showing that the Respondent has registered the Domain Name primarily for the purpose of selling it to the Complainant for a valuable consideration in excess of its out-of-pocket costs (paragraph 4 (b) (i) of the Policy).
However, the fact that the trademark "JIL SANDER" is famous and that Respondent was probably aware of this (since all different forms of this trademark are also registered in Italy) or should have noticed this fact, if he would have carried out a trademark search, is an element indicating bad faith.
The Panel has also the impression that Respondent tries to profit from the well known character of Jil Sander to attract, for commercial gain, Internet users to its website (National Football League Properties, Inc. and Chargers Football Company vs One Sex Entertainment Company, a/k/a, Chargergirls, WIPO Case No. D2000-0118; Motorola Inc. vs NewGate Internet Inc., WIPO Case No. D2000-0079; Nokia Corporation vs. Nokia girls.com a.k.a IBCC, WIPO Case No. D2000-0102).
Moreove, linking the Domain Name to a pornographic site tarnishes Complainant's well known trademark.
The Panel finally adds that the fact that the Respondent did not file a Response comforts the Panel, under the given circumstances, in its finding of bad faith.
In the light of the foregoing, the Panel concludes and decides that the domain name <jilsander.info> shall be transferred to the Complainant.
Dr. Thomas Legler
Date: November 24, 2003