WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Etro S.p.A, v. T.N.T TerrificNTerry Inc
Case No. D 2007-1080
1. The Parties
The Complainant is Etro S.p.A., of Milan, Italy, represented by Studio Legale Perani, Milan Italy.
The Respondent is T. N. T. TerrificNTerry Inc., of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <etro.biz> is registered with Go Daddy Software.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center (the Center) by email on July 23, 2007 and in hard copy form on July 24, 2007 receipt of said Complaint being acknowledged by the Center in a letter to the Complainant dated July 31, 2007.
The Center then proceeded to verify that the complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on July 30, 2007.
On July 25, 2007, GoDaddy.com confirmed to the Center the status of the Domain Name, the identity of the Respondent as the current registrant and the applicability of the Rules and the Policy to this Domain Name. GoDaddy.com further confirmed that it had locked the Domain Name registration and that the Domain Name will remain locked during the pending administrative proceeding.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the Rules and the Supplemental Rules.
In a letter dated July 31, 2007, the Center informed the Respondent of the commencement of the proceedings, and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
The Respondent was notified about its failure to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for the submission of its response on August 23, 2007.
The Center appointed Pavan Duggal as the sole panelist in this matter on September 4, 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.
No further submissions were received by the Center or the Panel, as of the Panel’s Decision on September 18, 2007.
4. Factual Background
The Complainant is an Italian company mainly in the fashion business. The Complainant trades under the trademark ETRO in Italy and several other countries. Complainant ETRO S.p.A. is the owner of the following trademark registrations for ETRO:
- Community trademark registration no. 552430 ETRO, filed on June 10, 1997 and granted on April 20, 1999, in classes 3, 8, 9, 11, 14, 16, 18, 19, 20, 21, 23, 24, 25, 27, 28, and 34;
- International trademark registration no. 417076 ETRO, granted on July 26, 1975 and renewed on July 26, 1995, in class 24;
- International trademark registration no. 481107 ETRO, granted on November 5, 1983 and renewed on November 5, 2003, in classes 3, 18, 24, and 25;
- US trademark registration no. 1134684 ETRO, filed on July 10, 1978, granted on May 6, 1980 and renewed on May 6, 2000, in class 24;
- Canadian trademark registration no. 296021 ETRO, filed on January 4, 1984, granted on October 12, 1984 and renewed on August 26, 1999, in class 25;
- Canadian trademark registration no. 313977 ETRO, filed on November 1, 1984, granted on May 9, 1986 and renewed on March 30, 2001, in class 18;
- Canadian trademark registration no. 678593 ETRO, filed on January 6, 2005, and granted on December 19, 2006, in classes 14, 18, 25, and 26.
The Complainant also owns the website “www.etro.com”.
The Respondent’s website at the <etro.biz> domain name offers several fashion and luxury items (such as apparel, purses and perfumes, etc.). The website is also linked to a page containing several links to websites offering fashion items.
According to the Whois database search results the Respondent registered the Domain Name with the Registrar on Friday Aug 18, 20:24:17 GMT 2006.
5. Parties’ Contentions
The Complainant has based its contentions on the various grounds detailed in the Policy. It contended that the domain name <etro.biz> is confusingly similar or identical to the Complainant’s ETRO trademarks.
The Complainant further contends that the Respondent must have been aware of the Complainant’s famous ETRO trademarks, and the domain name has been registered in bad faith. ETRO is a well-known company in the fashion business located in Milan that trades under the trademark ETRO in Italy and elsewhere. ETRO shops are present in several countries.
The Complainant additionally contends that the Respondent has no rights in the domain name, since the domain name does not correspond to a trademark registered in the name of the Respondent. The contested domain name is not used for any bona fide offerings.
The Complainant further contends that the website at the domain name <etro.biz> offers several fashion and luxury items (such as apparels, purses and perfumes), even coming from the Complainant’s competitors and thus the Respondent is trying to get benefits of the reputation of the Complainant’s “ETRO” trademark.
The Complainant also contends that no non-commercial use of the domain name by the Respondent is at stake.
The Complainant further contends that there are present circumstances indicating that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. In addition, the presence of links to the websites of the Complainant’s competitors renders the Respondent’s conduct even worse.
The Complainant finally contends that there may be a possibility that the Respondent registered the domain name at issue in order to resell the same to the Complainant.
The remedy requested by the complainant is to get the contested domain name transferred to it.
The Respondent did not reply to the Complainant’s contentions
6. Discussion and Findings
Paragraph 14 of the Rules reads as follows:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
Pursuant to paragraph 14 of the Rules as mentioned above, in the absence of a response to a Complainant’s allegations by the Respondent, the Panel is to consider those claims in the light of the unchallenged evidence submitted by the Complainant.
However, the Panel cannot decide in the Complainant’s favor solely given the Respondent’s default, but is entitled to draw, and does such inferences as it feels just from the Respondent’s failure to respond.
Taking in view the Policy the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
A. Identical or Confusingly Similar to Trademark
As stated above, the Complainant relies on its registered trademarks registered with various registering authorities all over the world and alleges that ETRO is a very strong trademark all over the world.
Given that the Domain Name is identical to the Complainant’s ETRO trademark, the Panel is of the opinion that the Complainant has met the burden of proof as required by paragraph 4(a)(i) of the Policy.
It has also been well established by previous panel decisions that the domain name extension – such as .com, in this case .biz – does not prevent a domain name from being considered to be identical to a trademark (See The Little Gym International, Inc. v. Domainstuff.com, WIPO Case No. D2003-0466; Cigna Intellectual Property, Inc. v. Yun Sung Lee, WIPO Case No. D2003-1042).
Other panels have addressed the question of domain names being confusingly similar to famous trademarks or service marks especially relating to well known fashion companies. Fendi Adele S.r.l. v. Mark O’Flynn, WIPO Case No. D2000-1226; Calvin Klein Trademark Trust and Calvin klein, Inc. v. Rhythm, WIPO Case No. D2001-1295; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A, Ermenegildo Zegna Corporation v. Jacques Stade, WIPO Case No. DBZ2003-0003.
Thus, the Complainant has demonstrated to the satisfaction of this Panel that the Domain Name is identical or confusingly similar to a trademark in which it holds rights.
B. Rights or legitimate Interests
Paragraph 4(a)(ii) of the Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel is of the opinion that no evidence has been provided which would support a finding under paragraph 4(c)(i) and (ii) of the Policy, i.e., the Panel is of the opinion that the evidence of record does not show use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services nor does it show that the Respondent has commonly been known by the Domain Name. The Panel is also of the opinion that the circumstances do not warrant a finding of legitimate rights or interest under paragraph 4(c)(iii) of the Policy.
Once a complainant makes an allegation that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611, it was held that “once lack of legitimate rights or interests has been alleged by a complainant, the respondent is obliged to adequately address this issue.” It was also held that “[t]his finding is supported by various means which are available to a respondent under the UDRP Policy to show legitimate rights or interests, on a balance of probabilities.” The CTCA Panel further relied on MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205, wherein it was held as follows: “The Administrative Panel, as permitted by paragraph 14(b) of the Rules, draws the inference from the Respondent’s failure to respond to this administrative proceeding, that the complainant is correct in its assertion that the respondent lacks rights or legitimate interests [in the domain name] and finds that the Complainant has established prima facie that the Respondent lacks rights or legitimate interests and therefore has successfully met its second burden, under Policy, paragraph 4(a)(ii). Since the Complainant’s adoption and extensive use of the ETRO mark for nearly three decades predates the first use of the Domain Name, the burden is on Respondent to establish its rights or legitimate interests in the Domain Name. See, PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174.
It was held in Ford Motor Company v. International Newcastle, WIPO Case No. DBIZ2002-00185, that “[w]here Complainant asserts that Respondent has no rights or legitimate interests and where Respondent fails to contest such assertions, the Panel is entitled to infer that Respondent has no such rights or interests.” The instant case had further cited the cases Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011, as authorities to support the same.
The Panel finds it appropriate to draw an adverse inference from the Respondent’s failure to respond to the complaint (as has been so drawn in SSL International v. Mark Freeman WIPO Case No. D2000-1080, and Alta Vista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848).
There appears to be no bona fide offering of goods or services being carried out by use of the disputed Domain Name. Furthermore, the Respondent is not commonly known by the disputed Domain Name unlike the Complainant who has made a name for itself with its ETRO trademark.
Therefore, the Panel finds that the Respondent has no legitimate rights or interest in the Domain Name in question.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Rules, for the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(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 the holder’s 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 [the respondent] 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 [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on [the respondent’s] website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
Pursuant to paragraph 4(a)(iii) of the Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith. From a perusal of the documentation on the record of the case, it is apparent that the Respondent appears to have registered and is using the Domain Name solely for commercial gain. Respondent derives a financial benefit from the web traffic that is diverted through the Domain Name. Since the ETRO mark is widely known and Respondent has no rights in it, the most likely reason why Respondent could have wanted to register and use a domain name incorporating the ETRO mark was that it knew of this mark and wanted to use it in the Domain Name in order to profit from the traffic generated by the fame of the mark, and not for any legitimate noncommercial or fair use purpose.
The Respondent is in default in this proceeding. It thereby fails to invoke any element or circumstance which could indicate the good faith nature of his registration and use of the Domain Name.
The Panel finds that the registration has been done in bad faith as the Respondent could not have been unaware of the ETRO trademark, and notes that the website at the domain name in question is used to provide links to products in competition with the Complainant’s goods. See, Consitex S.A., Lancificio Ermenegildo Zegna & Figli S.p.A, Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO Case No. D2003-0266.
The Panel finds that based on the evidence before it, the Respondent most likely engaged in this activity in order to profit from the goodwill and reputation of ETRO S.p.A.
The Panel finds that evidence on the record of the present case is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).
The Panel finds that the Respondent has registered and is currently using the Domain Name in bad faith.
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, <etro.biz> be transferred to the Complainant.
Dated: September 18, 2007