WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Etro S.p.A. v. Unasi Inc.
Case No. D2005-0713
1. The Parties
The Complainant is Etro S.p.A., Milano, Italy, represented by Carlo Mezzanotte and Paolo Pozzi, Perani Mezzanotte & Partners, Italy.
The Respondent is Unasi Inc., Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name is <etropurses.com>.
This domain name was registered with iHoldings.com Inc. d/b/a DotRegistrar.com on February 28, 2005.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2005. On July 7, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On July 8, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the relevant contact details. 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 July 19, 2005.
In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2005.
The Center appointed Pierre O. Kobel as the sole panelist in this matter on August 17, 2005. The Panel finds that it was properly constituted. The Panel submitted his 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 a well known company in the fashion business located in Milano that manufactures, markets and sells a variety of products such as house furnishing, various accessories for men and women including handbags and perfumes, prêt-à-porter collection and eyewear.
The Complainant trades under the trademark ETRO in Italy and abroad.
The Complainant has submitted a computer print out showing all its trademarks registrations and applications for ETRO. Among these trademarks, the following ones are the most relevant considering that the Respondent is located in Panama:
- Panama trademark registration No. 54960 “ETRO and logo”, applied on October 30, 1990 and granted on December 6, 1991, in connection with the products of class 18 (“leather and imitations of leather and goods made of these materials and not included in other classes, …”);
- Panama trademark registration No. 54961 “ETRO and logo”, applied on October 30, 1990 and granted on July 31, 1992, in connection with the products of class 25 (“Clothing, footwear, headgear”);
- Panama trademark registration No. 94298 “ETRO and logo”, applied on June 8, 1998 and granted on February 7, 2000, in connection with the products of class 9 (“Scientific, nautical, surveying, photographic, cinematographic, optical … apparatus and instruments”).
The three above mentioned trademarks are semi-figurative: they are made up of the term “ETRO” and a logo representing a winged horse which appears to soar up skywards.
Two of them (registrations Nos. 54960 and 54961) display the term “ETRO” surrounded with two lines placed above and under the latter.
The Complainant furthermore owns a great number of word trademarks in classes 18 and 25, among other classes, registered worldwide.
The disputed domain name <etropurses.com> was registered by the Respondent on February 28, 2005.
5. Parties’ Contentions
The Complainant contends that:
- Etro is a well-known company in the fashion business located in Milan, marketing and selling high quality products of a unique style.
- The disputed domain name is made up of the term “etro” which is the Complainant’s trademark and the word “purses” which is descriptive of the products commercialized on the web site “www.etropurses.com”.
The disputed domain name is therefore confusingly similar to the Complainant’s trademarks since the word “purses” lacks of distinctiveness and is thus not able to distinguish the domain name from the Complainant’s trademarks.
In support of its argumentation, the Complainant quotes a great number of decisions such as GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424, Fendi Adele S.r.l v. Mark O’Flinn, WIPO Case No. D2000-1226, Calvin Klein Trademark Trust v. Jonathan Dardashti, WIPO Case No. D2001-1158, Prada S.A. (formerly Prefel S.A.) v. Mark O’Flinn, WIPO Case No. D2001-0368.
The Complainant contends that:
- To his knowledge, no trademark covering the term ETRO has ever been applied or registered in the name of the Respondent.
- It has never licensed or otherwise authorized the Respondent to use its ETRO name and trademark and that, as far as it is aware, the Respondent is not commonly known under the name “Etropurses”.
The Complainant concludes that:
- the domain name <etropurses.com> operates in the same field as the Complainant’s. This shows that the disputed domain name is registered for the purpose of disrupting Etro’s business and directing traffic to the Respondent’s web site.
- The use of the disputed domain name by the Respondent constitutes an attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s web site and trademarks. In support of these contentions, the Complainant relies upon the following WIPO UDRP panel decisions: Fendi Adele R.r.l. v. Mark O’Flinn, WIPO Case No. D2000-1226, Don Algodon H, S.A. v. Miguel Garcia Quinta, WIPO Case No. D2000-1042, Express Messenger Systems, Inc. v. Golden State Overnight, WIPO Case No. D2001-0063, Aero Products International, Inc. v. Mattress Liquidation Specialists, WIPO Case No. D2002-0921 and Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346.
- Registering and using a domain name corresponding to a famous trademark the Respondent could not ignore is another evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions and is in default.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the conditions under which the holder of a trademark can obtain either the cancellation or the transfer of a disputed domain name:
i) the domain name at dispute is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
ii) the holder of such domain name has no rights or legitimate interests in respect of such domain name; and
iii) the domain name at stake has been registered and is being used in bad faith.
Where the respondent is in default, the Panel is to proceed to a decision on the complaint (see paragraph 14(a) of the Rules). The Panel must still examine whether the complaints meet the conditions set forth in paragraph 4(a) of the Policy. It may draw such inferences as it deems appropriate from the respondent’s failure to file its response in due time.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant holds valid rights in the trademarks ETRO.
A great number of the trademarks held by the Complainant are word trademarks exclusively made up of the only term “etro”.
The domain name in dispute is a combination of the term “etro”, identical to the prior Complainant’s word trademarks, and the word “purses”.
While the term “etro” is a neologism without any specific meaning, the word “purses” is a descriptive term which directly refers to the clothing and handbags accessories. Instead of being a mere addition without significance, the addition of the word “purses” to the term “etro” within the domain name “etropurses” reinforces the likelihood of confusion with the trademarks held by the Complainant.
Based on the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s word trademarks (Marie Claire Album S.A. v. Buy This Domain, WIPO Case No. D2002-0677; Etro S.p.a. v. Messrs. Mark O’Flynn, Luciano Carbonetti PGC s.r.l., WIPO Case No. D2000-1289) in the sense of paragraph 4(a)(i) of the Policy.
In relation to the semi-figurative trademarks of the Complainant, it must be noted that the mere adjunction of a logo to the term ETRO is not sufficient to eliminate the risk of confusion between the domain name <etropurses.com> and the trademarks. The word element of such semi-figurative trademarks remains the most distinctive element in the eyes and mind of the public. From a visual point of view and despite the adjunction of the logo, the term “etro” remains within these trademarks clearly distinguishable by consumers. From a phonetic point of view, it is likely that consumers will refer to these trademarks by the mere pronunciation of the term “etro”.
Under these circumstances, the Panel finds that there also exists a risk of confusion between the disputed domain name and the Complainant’s trademarks registered in Panama in the sense of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that it has never licensed its trademark to the Respondent or otherwise authorized the Respondent to use its trademark as a domain name. It also contends that the Respondent is not commonly known by the name “etropurses” and therefore has no legitimate interest in the disputed domain name.
In the absence of Response to the Complaint, the Panel is satisfied that the Complainant has prima facie proven the absence of legitimate interest of the Respondent within the meaning of paragraph 4(a)(ii) of the Policy (Accor v. Media Insights, WIPO Case No. D2004-0043).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“ (i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
The file contains evidence that the Respondent has set up and uses a portal web site which is linked to several web sites promoting, among others, handbags and purses of different trademarks. It is therefore clear that the Respondent is active in the marketing and sale of fashion accessories.
The first page of the “www.etropurses.com” web site shows a list of these web sites links and presents the latter as “sponsored links”.
The first page of the web site “www.etropurses.com” does not display any ETRO brand products.
On the basis of the evidence submitted by the Complainant, the sponsored web sites, “www.luxtoria.com” and “www.adasa.com”, display products competing with those of the Complainant. However, none of these products appear to be ETRO items either.
In relation to the other sponsored web sites, nothing in the file indicates that they offer for sale any ETRO brand products. Nothing indicates either that they offer for sale fashion accessories. Thus in relation to these sponsored web sites, the Respondent is likely to receive, as a sponsor, a fee for any contact.
In light of Etro’s notoriety and in absence of Response, it can only be assumed that the Respondent knowingly and purposefully chose a domain name confusingly similar to the Complainant’s trademarks (GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424). It appears that the Respondent has registered and used the disputed domain name <etropurses.com> to direct Internet users seeking Etro’s web site to its own web site, while neither the latter nor the web sites to which it is linked promote and sell the Complainant’s authentic products. It deliberately traded on the Complainant’s trademark fame to attract customers on its web site in order to sell items competing with those of the Complainant or otherwise receive a fee for contacts made with the sponsored sites. The Panel consequently determines that Respondent acted in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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 <etropurses.com> be transferred to the Complainant.
Pierre O. Kobel
Dated: August 31, 2005