WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calzaturificio Luigi Baracchino & C. S.p.A. v. Quickserf Kyriacos Kakofegitis
Case No. D2007-1489
1. The Parties
The Complainant is Calzaturificio Luigi Baracchino & C. S.p.A., of Firenze, Italy, represented by Fiammenghi-Fiammenghi, Italy.
The Respondent is Quickserf Kyriacos Kakofegitis, of Nicosia, Cyprus.
2. The Domain Name and Registrar
The disputed domain name <saxshoes.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2007. On October 12, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 12, 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. 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 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2007.
The Center appointed Angela Fox as the sole panelist in this matter on November 19, 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 an Italian shoe manufacturer. Since the early 1970s, it has sold a line of footwear branded SAX. The SAX range is sold in over 21 countries worldwide, including much of Europe, Canada, the United States of America, Japan, Hong Kong, SAR of China and Taiwan, Province of China.
The SAX trademark and marks incorporating it as the distinctive element have been extensively registered internationally. Appended to the Complaint was a list of countries in which the SAX marks have been protected in respect of footwear, together with copies of registration and renewal certificates for the following, all of which pre-date the registration of the disputed domain name:
- SAX in Saudi Arabia (no. 278/95), Italy (no. 301260), the United Kingdom (no. 1509345) and Turkey (no. 146553);
- SAX [Stylised] in Canada (no. 436854);
- SAX Made In Italy as an International Registration (no. 687086) based on Italian registration no. 660651 and designating Germany, Austria, the Benelux, Spain, France, Liechtenstein, Monaco, Portugal and Switzerland;
- LINEA SAX [Stylised] in Turkey (no. 139192);
- LINEA SAX [Stylised] as an International Registration (no. 565844) based on Italian registration no. 538419 and designating Germany, Austria, the Benelux, France, Monaco, Switzerland, Russia and the Ukraine; and
- LINEA SAX in Hong Kong, SAR of China (no. 8343).
The Complainant operates a website at “www.sax-shoes.com” where it promotes its business in SAX-branded footwear.
The disputed domain name was registered on January 22, 2004. It links to a page headed “SAX YOUR PASSPORT TO STYLE” which displays the options “Intro”, “About Us”, “Marketing” and “Showroom”. The “About Us” page is in Greek; the others are blank apart from stylized images of ladies’ footwear and advertisements for third-party commercial websites, including “www.mad.tv”, a Greek music portal; Mix FM 102.3, an apparent radio station; “www.athinorama.gr”, a Greek-language entertainment website; and the Vogue magazine website at “www.style.com”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its SAX, LINEA SAX and SAX Made in Italy trademarks. It submits that SAX is identical to the core distinctive element of its prior trademarks. The descriptor “shoes” serves merely to reinforce the impression that the disputed domain name is in some way linked to the Complainant, since these are the Complainant’s actual goods. The Complainant argues that such use infringes its rights and erodes the value of its distinctive mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not related to or authorized by the Complainant to use the SAX mark.
Finally, the Complainant submits that the disputed domain name was registered and has been used in bad faith. The Complainant submits that the disputed domain name was registered to take advantage of the fame of the Complainant’s SAX trademark and to divert Internet traffic seeking information on the Complainant’s SAX-branded shoes, for commercial gain.
The Respondent did not reply to the case against it and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it owns registered trademark rights in the word SAX and in the marks LINEA SAX and SAX Made In Italy, which incorporate SAX as the distinctive element.
The disputed domain name consists of SAX and a descriptive word, “shoes.” The former is identical to the Complainant’s registered SAX trademark, and the latter refers to the goods in respect of which that mark is used.
It is well-established that descriptive or generic additions to a trademark, and particularly those that designate the goods or services in respect of which it is used, do not avoid confusing similarity of domain names and trademarks (See inter alia Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032, involving 13 trademarks incorporating the word LEXUS and geographic, surnominal or generic descriptive words; and PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162, concerning the domain name <ralphlaurenpants.com>).
The Complainant’s SAX trademark is both registered and used in respect of shoes. The Respondent’s adoption of a domain name comprising the Complainant’s trademark and a descriptive element denoting footwear is likely to give rise to confusion because it points to the field of goods in which the Complainant’s mark is protected and used.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has put forward no evidence that it holds a right or legitimate interest in the disputed domain name.
There is no evidence that the Respondent has been commonly known by a name corresponding to the disputed domain name, nor is the Respondent using the disputed domain name in connection with any offering of goods or services, whether bona fide or otherwise. Nor does it appear to be making a non-commercial or fair use of the disputed domain name, given that the linked site is being used to host click-through advertisements for third-party commercial websites. In the Panel’s view, such use is neither a bona fide offering of goods or services nor a noncommercial or fair use.
Similar findings were reached by the panel in PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162 and Fresh Intellectual Properties, Inc. v. Matt Braska, WIPO Case No. D2005-0096, where the respondents were collecting advertising revenue from click-through links. The absence of evidence of such an arrangement in this case does not affect the finding that the Respondent’s use is not non-commercial, however, because advertising third-party commercial websites is clearly commercial in nature. The Respondent has not, moreover, denied the assertion that it has been diverting Internet traffic away from the Complainant’s legitimate website for commercial gain.
The SAX mark is inherently distinctive in respect of shoes, and the Complainant asserts that the mark is well-known internationally for those goods. The Respondent has not denied this nor offered any explanation for its adoption of a domain name that is confusingly similar to the Complainant’s distinctive trademark. The Respondent’s conduct strongly supports the contention that it was aware of the Complainant’s brand when it registered the disputed domain name and that it did so in order to attract Internet users searching for information on the Complainant’s brand, with an eye to diverting them to third-party commercial websites. In the Panel’s view, such conduct cannot give rise to a right or legitimate interest in the disputed domain name.
In view of the foregoing, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include paragraph 4(b)(iv):
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of its website or of a product on that site.
The Complainant submits that its SAX trademark has been in use for shoes for more than three decades. Within at least the last decade, that use has extended beyond Italy into the rest of Europe and internationally. The Respondent, who is based in Greece, has not denied knowledge of the Complainant’s trademark. Given the inclusion of the word “shoes” in the disputed domain name and the images of footwear and references to “style” on the linked website, the Panel thinks it more likely than not that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name.
Taking into account the Complainant’s long-standing use of the SAX mark in relation to shoes, Internet users encountering the disputed domain name <saxshoes.com> are likely to believe that they have found a link to a website legitimately connected to the Complainant. The images of shoes and references to “style” on the linked site serve only to support that misconception. These factors point to an intentional attempt by the Respondent to attract Internet users to its site by creating a likelihood of confusion with the Complainant’s SAX mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Respondent does not appear to have offered any goods or services through its website. However, several sections of the site feature advertisements for other commercial websites, most of which allow a visitor to click directly through to the advertised site. Click-through links typically generate revenue for the linking party, and the Respondent has not denied the Complainant’s assertion that it has been diverting Internet traffic away from the Complainant’s legitimate site for commercial gain. There is no evidence of any advertising revenue arrangement between the Respondent and the advertisers. However, such arrangements are typical and it is difficult to see why the Respondent would have taken the trouble to set up links to unrelated commercial websites in the absence of any benefit to it. The Respondent has not denied the assertion that it was acting for commercial gain in doing so. The Panel finds that, on the balance of probabilities, the Respondent was acting for commercial gain in intentionally attempting to attract Internet users to its website by creating a likelihood of confusion with the SAX trademark and providing click-through links to third-party websites. A similar finding was reached by the panel in McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353.
In the Panel’s view, the evidence is sufficient to support the claim that the disputed domain name was registered and used in bad faith. The Panel so finds.
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, <saxshoes.com>, be transferred to the Complainant.
Dated: December 3, 2007