WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gilmar S.p.A. v. Domain Administration Limited
Case No. D2007-0093
1. The Parties
The Complainant is Gilmar S.p.A., of San Giovanni in Marignano, Italy, represented by Studio Legale Perani, Italy.
The Respondent is Domain Administration Limited, David Halstead, of Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <icebergclothing.com> (“Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2007. On January 26, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name at issue. On January 31, 2007, eNom 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. In response to a notification by the Center on February 6, 2007 that the Complaint was administratively deficient (i.e. the name and contact details of the Respondent stated in the Complaint were not the ones given to WIPO by eNom), the Complainant filed an amendment to the Complaint on February 9, 2007 in order to amend the information relating to the Respondent. The Center verified that the Complaint together with the amendment to 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 February 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2007.
The Center appointed Richard Tan as the sole panelist in this matter on March 27, 2007. 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 a leading manufacturer of high-end clothing and fashion accessories based in Italy, with boutique stores in a number of metropolitan cities around the world including Milan, Rome, Firenze, Verona, Riccione, Porto Cervo, Capri, Paris, Lyon, Amsterdam, Los Angeles, Beverley, Dubai, Moscow and Sydney. It holds numerous trademark registrations for its products in many countries.
The disputed Domain Name resolves to a website containing a search engine with sponsored links to third party sites offering inter alia, links to other fashion and apparel sites, travel services, technology information, health and beauty products, gift items and financial services. The website has been placed under lock by the domain name registrar.
5. Parties’ Contentions
The Complainant contends as follows:
(a) The Domain Name is confusingly similar to the Complainant’s widely known trademark ICEBERG.
The Complainant contends that it is the owner of the trademark ICEBERG which has been registered and/or is pending registration in numerous countries including, but not limited to, Italy (trademark registration nos. 683783, date of grant – July 4, 1996 and 376926, date of grant – November 8, 1985 in class 25), International trademark registration no. 498204 (date of grant – November 8, 1985) in class 25 and New Zealand (registration no. 190423 date of grant – March 13, 1992) in class 25.
The Complainant contends that the Domain Name is confusingly similar to the ICEBERG trademark in which the Complainant has rights. The Domain Name consists of the word “Iceberg” and the word “clothing” joined together as one word. The Complainant contends that the word or term “clothing” is merely descriptive of a class of goods and does not differentiate the Domain Name from the Complainant’s mark. The Complainant refers to Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Rhythm (WIPO Case No. D2001-1295) which found that the word “watches” in the disputed domain name <calvinklein-watches.com> did not avoid a finding of confusing similarity.
The Complainant further contends that the use of the Domain Name for the advertising and promotion of fashion items including ICEBERG products increases the likelihood of confusion as ICEBERG is traditionally associated with fashion clothing and has acquired a substantial reputation in the fashion apparel industry.
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that the Respondent has no rights to the Domain Name which does not correspond to any trademark registered in the name of Domain Administration Limited, nor is Domain Administration Limited commonly known as ICEBERG CLOTHING.
The Complainant contends that the Domain Name is not used for any bona fide offering of goods or services in good faith. The Complainant further contends that the Respondent is, in effect, profiting of the reputation of ICEBERG mark by offering several fashion items, including the goods of rival fashion companies for sale.
The Complainant also contends that the Respondent is not engaging in any fair, non-commercial use of the Domain Name.
(c) The Respondent’s registration and use of the Domain Name is in bad faith.
The Complainant contends that in registering and using a domain name that creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, the Respondent was and is intending to exploit the reputation of the ICEBERG mark. In particular, the choice of the Domain Name is likely to confuse consumers and mislead them into thinking that the Respondent’s website is an authorised website of the Complainant’s through which the public can purchase products manufactured or sold by the Complainant.
Further, the Complainant asserts that the Respondent has attempted to conceal its contact details and identity.
The Complainant avers that the Respondent’s conduct indicates an intent to deceive and bad faith on the part of the Respondent, and contends that this kind of behaviour has been punished in previous decisions such as Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Rhythm (WIPO Case No. 2001-1295), Fendi Adele S.r.l. v. Mark O’Flynn (WIPO Case No. D2000-1226), GA Modefine S.A. v. Mark O’Flynn (WIPO Case No. D2000-1424), Prada S.A. v. Mark O’Flynn (WIPO Case No. D2001-0368), Revillon S.A. v. Fur Online Inc. (WIPO Case No. D2000-0632), Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Jacques Stade (WIPO Case No. DBZ2003-0003), Victoria’s Secret Stores Brand Management, Inc., Victoria’s Secret Stores, LLC, and Victoria’s Secret Direct, LLC v. Sharon Brown and Kenneth Brown (WIPO Case No. D2006-0556)
The Respondent has not filed a Response.
6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the Domain Name:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark 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.
The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.”
As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true the factual averments of the Complaint for the purposes of these proceedings, see Talk City, Inc. v. Michael Robertson (WIPO Case No. D2000-0009).
The Respondent’s default, however, does not lead to an automatic ruling in favor of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, that it is entitled, under the Policy, to a transfer of the Domain Name, see World Wrestling Federation Entertainment, Inc. v. Michael Bosman (WIPO Case No. D1999-0001).
A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Having regard to the evidence adduced by the Complainant and considering that the evidence is unchallenged as no Response has been filed by the Respondent, this Panel accepts that the Complainant has rights in the trademark ICEBERG.
It is clear from a comparison of the Complainant’s ICEBERG trademark with the Domain Name <icebergclothing.com> that the Domain Name is a reproduction of the ICEBERG trademark in full with the addition of the term “clothing” and the “.com” gTLD.
It is well-established under the Policy that a domain name composed of a trademark coupled with a generic term can still be regarded as confusingly similar to the trademark, see for example, Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans) WIPO Case No. D2002-0367, where the panel held that the addition of the generic term, ‘automotive’ did not distinguish a respondent’s domain name <experianautomotive.com> from the complainant’s mark, as the domain name contained the Complainant’s EXPERIAN mark in its entirety.
This Panel similarly finds that the addition of the word “clothing” to the Complainant’s ICEBERG mark is not sufficient to distinguish it from the Complainant’s mark, and that the Domain Name is confusingly similar therewith.
It has also been established in past decisions that the addition of a .com gTLD which is required for the registration of domain names is not sufficient to escape a finding of substantial or confusing similarity (see inter alia, CSC Holdings, Inc. v. Elbridge Gagne (WIPO Case No. D2003-0273), CITGO Petroleum Corporation v. Horace A. “Woofer” Smith (WIPO Case No. D2003-0054), EasyGroup IP Licensing Limited v. Amjad Kausar (WIPO Case No. D2003-0012), Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures (WIPO Case No. D2002-0567), Telecom Personal, S.A., v. NAMEZERO.COM, Inc. (WIPO Case No. D2001-0015)).
Accordingly, the Panel finds that the Domain Name is confusingly similar to the trademark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is also required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in the Domain Name. The onus is initially on the Complainant to establish a prima facie case, and once this has been done, the onus shifts to the Respondent to prove the contrary. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini (WIPO Case No. D2001-0700).
It has been recognized by many panels that it is difficult for the Complainant to prove a negative for the purposes of paragraph 4(a)(ii) of the Policy, since it must prove matters that may be within the exclusive knowledge of the Respondent. Accordingly, many panels have held that it is sufficient that the Complainant show a prima facie evidence in order to shift the burden of proof on the Respondent (see, for example, Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC (WIPO Case No. D2000-1553), Intocast AG v. Lee Daeyoon (WIPO Case No. D2000-1467)).
In this instance, the Complainant has asserted that the Respondent does not have any legitimate rights or interests to the Domain Name since, to the Complainant’s knowledge, the Respondent does not hold any trademark registrations for ICEBERG. Further, neither Domain Administration Limited nor David Halstead is commonly known as ICEBERGCLOTHING. The Complainant has not given any authorisation or consent to the Respondent’s use of the Complainant’s trademark.
The Complainant also contends that the Respondent is not using the Domain Name for any bona fide offering of good or services in good faith. The Complainant avers that the Respondent’s site offers several fashion items, including the Complainant’s competitors’ fashion goods by profiting of the reputation of the ICEBERG mark.
Even in the absence of a Response, this Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the Domain Name, namely:
(i) before any notice to the Respondent of the dispute, 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; 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 commercial gain to misleadingly divert consumers.
If any of the above circumstances is established, the Respondent may be said to have rights to or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) (see Digital Vision, Ltd. v. Advanced Chemill Systems (WIPO Case No. D2001-0827)), in which event, the Complaint must be denied.
Considering the extensive references to ICEBERG clothing and accessories on the Respondent’s website, this Panel finds that the Respondent must have been aware of the Complainant’s ICEBERG mark and has been using the website for commercial gain to misleadingly attract consumers to the website.
There appears to be no correlation between the contents of the Respondent’s site and the Complainant. There is also nothing before the Panel to suggest that the Respondent has been commonly known by the Domain Name.
Taking into consideration the evidence adduced by the Complainant and in the absence of a response from the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:
(i) circumstances indicating that the Respondent 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent 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 it has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location or of a product or service on its website or location.
The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant contends that in intentionally registering and using a domain name which consists of a famous trademark, the Respondent is deliberately exploiting the fame of the ICEBERG mark in order to attract Internet users to a website which is not related to the Complainant for the purposes of commercial gain.
The Complainant further avers that the Respondent registered the Domain Name in order to resell it to the Complainant, and that the Respondent attempted to conceal its identity by supplying misleading contact details also demonstrates bad faith.
The Panel finds that the manner of use in which the Respondent has made of the Domain Name suggests an attempt on the part of the Respondent to mislead and attract consumers for the purposes of commercial gain by trading on the goodwill and reputation that is attached to the ICEBERG mark.
The Panel also finds that the registration and use for competing advertising links of a domain name that is so similar to the Complainant’s trademark leads to the inference that the Respondent in all likelihood registered and used the Domain Name to intentionally attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, and endorsement of the Respondent’s website within the meaning of paragraph 4(b)(iv) of the Policy and for the purpose of disrupting the business of the Complainant within the meaning of paragraph 4(b)(iii) of the Policy.
Accordingly, based on the totality of the evidence, and in the absence of a response from the Respondent, the Panel finds that the Domain Name has been registered and is being used in bad faith by the Respondent within the meaning of paragraph 4(a)(iii) 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 <icebergclothing.com> be transferred to the Complainant.
Dated: April 10, 2007