WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Helmut Lang S.a.r.l. v. Mr. Stanley Filoramo
Case No. D2003-0822
1. The Parties
The Complainant is Helmut Lang S.a.r.l., Luxembourg, Luxembourg, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Mr. Stanley Filorama, Montréal, Québec, Canada.
2. The Domain Name and Registrar
The disputed domain name <helmutlang.org> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 15, 2003. On October 16, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On October 16, 2003, Wild West Domains, Inc. 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 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 14, 2003.
The Center appointed James McNeish Innes as the Sole Panelist in this matter on November 21, 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
Complainant is an internationally well-known company in the field of fashion, and its name derives from the well-known "minimalist" fashion designer, Mr. Helmut Lang. Complainant is the owner of a number of trademark registrations for Helmut Lang. The style is evidenced by the website "www.helmutlang.com."
Complainant submits that it cannot be seriously disputed that Complainant is and has been the owner of the trademark Helmut Lang for many years and that it is a famous trademark as a cursory AltaVista or Google search under "helmut lang" would easily confirm "Helmut Lang" is also the distinctive part of Complainantís trade name.
5. Partiesí Contentions
The Complaint is made on the basis that:
(a) The domain name <helmutlang.org> is confusingly similar with or identical to the trademark Helmut Lang.
(b) There is no way that Respondent, an individual located in North America, where Helmut Lang has a significant market for fashion products, may not have been aware of the well-known trademark Helmut Lang and registration may only have occurred in bad faith. The fact that Respondent "specialises" in registering domain names corresponding to famous European trademarks (see under (d) hereunder), in order to offer through them links to pornographic websites, further confirms his bad faith.
(c) Upon information and belief, Respondent has no rights or legitimate interest in respect of the domain name. In particular (i) there is no evidence of the Respondentís 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. Respondent only offers pornographic images for a fee through its websites: (ii) Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name Helmut Lang: (iii) the use which respondent makes of the domain name is commercial, thus excluding the possibility of a non-commercial fair use.
(d) That Respondent operates in bad faith is evidenced by his registration of several other domain names identical to, or confusingly similar with, well-known European trademarks, such as, for example, <salumicitterio.com>, <lanificiofratellicerruit.com>, <diegodellavalle.info>, <anticocaffegreco.info>, <nigacalze.net>, all of them pointing to pornographic websites.
(e) The domain name is used in bad faith. The default page of <helmutlang.org> resolves in pornographic page selling (for a fee) pornographic images.
(f) The circumstances represent a situation that is "pornographic," where a cybersquatter tries to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic website. In particular: (a) a trademark the "pornosquatter" does not own is used; (b) the site to which the user is redirected is obviously pornographic; (c) the site is commercial, i.e. in order to access further pornographic services the internet user is invited to pay.
The remedy sought is transfer of the domain name to Complainant.
The Respondent has not replied to the Complainantís contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a Complaint 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:
1) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2) That the Respondent has no legitimate interests in respect of the domain name.
3) That the domain name has been registered and is being used in bad faith.
(a) Identical or Confusingly Similar
The domain name in issue in this case is <helmutlang.org>. Complainant has to prove that the domain name is identical with or confusingly similar to a trademark or a service mark in which Complainant has rights. From the submission by the Complainant supported by documentary evidence it follows that the Complainant has registered trademark rights in the trademark HELMUT LANG both in the European community and in a number of other countries including, inter alia, a Canadian registration. On the basis of these considerations, the panel finds it to be established that there exists a confusing similarly between the trademark in which the Complainant has rights and the domain name at issue.
(b) Rights or Legitimate Interest
On the evidence the Respondent has no rights or legitimate interest in respect of the domain name. There is no evidence of the Respondentís 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 and services. The only thing Respondent offers through its domain name is a link to a pornographic website. The Respondent has never been commonly known in the normal course of business by the trademark, tradename or domain name "Helmut Lang" and the Respondent links to a website which can be further navigated only by paying a fee. The use is commercial and any possibility of a non commercial fair use is excluded.
(c) Registered and used in Bad Faith
Given the Respondentís failure to file a response the panel accepts as true all the allegations of the Complaint. The Respondentís default does not however result in an automatic ruling for the Complainant. The Complainant must still show a prima facie case that it is entitled to the transfer of the domain name. The fact that the disputed domain name is redirected to a pornographic website is an indication that the domain name has been registered and used in bad faith. This conclusion has been reached in several WIPO cases. See for example:
Ty Inc v. O.Z. Names (WIPO Case No. D2000-0370), finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith. Six Continents Hotels, Inc v. Seweryn Nowak (WIPO Case No. D2003-0022), noting that "the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith."
The Complainant has also shown that the Respondent has registered several other domain names which are identical to or confusingly similar with other well known trademarks and linked to pornographic sites. In view of the above the panel finds that the Respondent has registered and has used the domain name in bad faith in accordance with paragraph 4(a)(iii) of the 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 <helmutlang.org> be transferred to the Complainant.
James McNeish Innes
Dated: November 28, 2003