WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fendi Adele S.r.l. v. Adtelect Networks Inc.
Case No. D2007-1436
1. The Parties
The Complainant is Fendi Adele S.r.l., Rome, Italy, represented by De Simone & Partners S.p.A., Italy.
The Respondent is Adtelect Networks Inc., Carson City, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name <baguettebag.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2007. On October 1, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On October 2, 2007, GoDaddy.com, Inc. transmitted by email to the Center its verification response stating that the Respondent named in the Complaint was not the holder of the domain name at issue but that Adtelect Networks Inc. was listed as the registrant. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 8, 2007, also naming Adtelect Networks Inc. as 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 6, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is well-known internationally as a prominent designer and manufacturer of clothing products and accessories in the field of luxury fashion. As such, the Complainant launched a most successful ladies’ handbag in 1996, the so-called BAGUETTE.
The Complainant owns numerous BAGUETTE trademarks throughout the world, including international registration no. 743546 of September 19, 2000 for BAGUETTE and US registration no. 2,803,999 of April 24, 2001, also for BAGUETTE (the “BAGUETTE Marks”).
The disputed domain name was first registered on September 22, 2006.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name <baguettebag.com> is confusingly similar to the trademark BAGUETTE in which the Complainant has rights because the trademark has been incorporated in its entirety into the contested domain name and is followed simply by a generic commercial term, which is an exact designation of the goods for which the trademark has become famous. As a result, the Complainant contends that likelihood of confusion exists.
(2) The Respondent has no rights or legitimate interests to use the domain name <baguettebag.com> as it has not been authorized by the Complainant to use the BAGUETTE Marks or variations thereof or to register corresponding domain names. The Complainant further contends that – as the Respondent is inter alia offering bags on its website and the term BAGUETTE has been coined in relation to bags by the Complainant – the Respondent is free-riding on the Complainant’s famous marks. Thus, it cannot have any rights or legitimate interests in respect of the domain name.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith.
With regard to bad faith registration, the Complainant contends that the Respondent must have been aware of the Complainant’s rights in the BAGUETTE Marks at the time it registered the domain name, which fully incorporates the Complainant’s marks next to a description of the goods designated thereby (bags), while the word “baguette” is normally totally unrelated to bags.
With regard to bad faith use, the Complainant contends that the website at the disputed domain name is currently used to offer (unauthorized) bags, to display advertising and to provide links to other fashion item sites. As a result, consumers are attracted and the domain name is used in bad faith for the Respondent’s commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In the amended Complaint, the Complainant named two respondents: Domains by Proxy, Inc. and Adtelect Networks Inc. However, Domains by Proxy, Inc. is simply a privacy domain name registration service offered by the Registrar and the Registrar has confirmed that the registered owner of the disputed domain name (i.e. the beneficial owner) is Adtelect Networks Inc. Accordingly, for purposes of this administrative proceeding, the Panel will treat Adtelect Networks Inc. as the relevant Respondent, behind the shield of Domains by Proxy, Inc. This also takes into consideration that the website at <baguettebag.com> has remained unchanged from the day of the filing of the Complaint until today.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s highly distinctive (in the context of the products offered) BAGUETTE Marks in which the Complainant has exclusive rights.
The mere addition of the generic word “bag” following the trademark does not eliminate the similarity between the Complainant’s marks and the domain name. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).
Furthermore, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Teradyne, Inc v. 4Tel Technology, WIPO Case No. D2000-0026).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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 the respondent 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 customers or to tarnish the trademark or service mark at issue.
The Respondent did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted. Based on the evidence before the Panel, the Respondent apparently did not make any bona fide offering of goods or services in connection with the domain name and is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or 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 respondent’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 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 the respondent’s website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
Evidence of bad faith registration and use is given when the registration of a domain name occurs in order to utilize a party’s well-known trademark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corp., NAF Case No. 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101).
It is inconceivable that the Respondent registered the disputed domain name without knowing of the Complainant’s BAGUETTE Marks because such marks are highly distinctive and the domain name consists of a combination of the Complainant’s trademarks and the generic word “bag” (a description of the goods offered by the Complainant). In the view of the Panel, the Respondent therefore registered the domain name <baguettebag.com> with full knowledge of the BAGUETTE Marks and thus in bad faith under paragraph 4(a)(iii) of the Policy.
Furthermore, by fully incorporating the BAGUETTE Marks into the domain name, the Respondent is in all likelihood trying to divert traffic intended for the Complainant’s website (searching for the original BAGUETTE bag) to its own in order to sell unauthorized merchandise.
As a result, the Panel finds that the Respondent registered the domain name with knowledge of the Complainant’s trademarks and has used the domain name in bad faith under paragraph 4(b)(iv) of the Policy in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
Therefore, the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.
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 <baguettebag.com> be transferred to the Complainant.
Dated: November 20, 2007