WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perlier S.p.A. v. Mr. Stanley Filoramo
Case No. D2003-0848
1. The Parties
Complainant is Perlier S.p.A., of Milano, Italy, represented by Studio Legale Jacobacci & Associati, Italy.
Respondent is Mr. Stanley Filoramo, of Montréal, Québec, Canada.
2. The Domain Name and Registrar
The disputed domain name <perlier.net> 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 28, 2003. On October 28, 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 28, 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 31, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 24, 2003.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on December 5, 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 asserted, and provided evidence in support of, the following facts, which the Panel finds well established:
Complainant is a well-known Italian cosmetic company and is the owner of a number of trademark registrations including the word PERLIER for cosmetic products throughout the world among which PERLIER, International Registration nį381173, registered on August 4, 1971, and renewed on August 4, 1991, for a period of 20 years.
PERLIER is also the distinctive part of Complainantís trade name.
The disputed domain name <perlier.net> has been registered by Respondent with Wild West Domains, Inc. on August 29, 2003.
The Panel notes that the registration dates of all of the above-referenced registrations as well as the vast majority of trademark registrations containing the word "PERLIER" listed in Complainantís attachment to the Complaint (although it is noted that Complainant did not produce all the related registration certificates), predate the date of registration of the disputed domain name by Respondent.
5. Partiesí Contentions
Complainant claims that the disputed domain name <perlier.net> is confusingly similar to the trademark PERLIER owned by Complainant.
In addition, Complainant claims that there is no way that Respondent may not have been aware of the trademark PERLIER of Complainant. This knowledge is confirmed by the fact that Respondent "specializes" in registering domain names corresponding to well-known Italian trademarks such as <salumicitterio.com>, <bellentani.net>, etc., and is therefore familiar with the Italian industry and its most famous trademarks. As a result, registration may only have occurred in bad faith.
Complainant also claims that Respondent uses the disputed domain name in bad faith, since the default page of "www.perlier.net" consists of a pornographic page selling various services connected with girls allegedly losing their virginity, and that, in this way, Respondent is trying to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic web site. Relying on various decisions, among which Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, Complainant claims that this case combines all the circumstances of "pornosquatting", in particular: (a) a trademark that 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. the Internet user must pay in order to access further pornographic images; and (d) there is a "mouse-trapping effect" making it more difficult for the casual Internet user to leave the pornographic web site.
Finally, Complainant asserts that, upon information and belief, Respondent has no rights to, or legitimate interests 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. The only thing Respondent offers through its domain name is a link to a pornographic web site;
(ii) Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name PERLIER;
(iii) Respondent links to the default page of a web site, which can be further, navigated on only by paying a fee. Hence, its use is commercial, and any possibility of a non-commercial fair use is excluded.
Based on the foregoing, Complainant seeks the transfer of the domain name <perlier.net> to Complainant.
Respondent did not reply to Complainantís contentions.
6. Discussion and Findings
The Panelís findings under each heading with reference to the partiesí contentions, the Policy, Rules, Supplemental Rules and applicable substantive law are the following:
A. Identical or Confusingly Similar
Complainant has proven that it owns the trademark PERLIER and trademarks incorporating the word "PERLIER" in respect of cosmetic products.
The trademark is included in the disputed domain name. The suffix <.net> is incidental to domain names and cannot serve to distinguish them.
The Panel therefore finds that the domain name <perlier.net> is confusingly similar to Complainantís trademark and as a consequence, the action brought by Complainant meets the requirement of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(b)(ii), Complainant must demonstrate that Respondent has no rights to, or legitimate interests in the domain name.
The Panel notes that, as asserted by Complainant in its Complaint:
(i) by typing "www.perlier.net", users are redirected to a pornographic web site. As stated in the decision Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, "[Ö] While [Ö] many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody elseís trademark as a domain name (or even as a meta-tag) clearly does not constitute a "bona fide" offering of goods or services when the web site owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark.";
(ii) given the use made by Respondent of the disputed domain name, there is little doubt that Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name PERLIER;
(iii) by requiring users to pay a fee, Respondent is clearly making a commercial use of the disputed domain name. Furthermore, by redirecting users to a pornographic web site, there is a clear intent from Respondent not only to misleadingly divert consumers but also to tarnish Complainantís trademark.
In any case, Respondent did not submit any Response and evidence proving its rights or legitimate interests in the disputed domain name, while it had been given the opportunity to do so pursuant to Paragraph 4(c) of the Policy.
As a result, the Panel finds that the requirements of Paragraph 4(a)(ii) of the Policy are fulfilled.
C. Registered and Used in Bad Faith
Complainant is a well-known Italian cosmetic company operating in Italy and abroad and is the owner of a number of trademark registrations including the word PERLIER for cosmetic products.
Furthermore, as demonstrated by Complainantís evidence, Respondent is clearly engaged in a pattern of registering domain names corresponding to Italian trademarks in which it cannot possibly have acquired any rights, proving that Respondent is familiar with Italian trademarks.
As a result and in the absence of contrary evidence submitted by Respondent, the Panel finds that Respondent knew of Complainantís trademark at the time it registered the disputed domain name <perlier.net> and, accordingly, that such registration was performed by Respondent in bad faith.
With regard to the use in bad faith of the disputed domain name, Complainantís evidence shows that, by typing "www.perlier.net", users are redirected to a pornographic web site. Such use by Respondent of Complainantís trademark as a domain name creates a likelihood of confusion with Complainantís trademark, thus attracting internet users who were not looking for a pornographic web site but for Complainantís products, in a misleading manner and for commercial gain as users must pay a fee for further navigation on this web site. As held in various decisions (Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860; Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568), the mere diversion of domain names to a pornographic web site, whatever the motivation of Respondent, is in and of itself certainly consistent with the finding that the disputed domain name was registered and is being used in bad faith.
Finally, Respondent did not submit any Response or evidence proving that it used the disputed domain name <perlier.net> in good faith, while it had been given the opportunity to do so.
Therefore, the Panel finds that the domain name <perlier.net> was registered and is used by Respondent in bad faith and considers the requirements of Paragraph 4(a)(iii) of the Policy to be fulfilled.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <perlier.net> be transferred to Complainant.
Dated: December 17, 2003