WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marina Yachting S.p.A, v. Bonaparte Hotel Group
Case No. D2008-0900
1. The Parties
The Complainant is Marina Yachting S.p.A., of Milano, Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Bonaparte Hotel Group, of Milano, Italy.
2. The Domain Name and Registrar
The disputed domain name <henrycottons.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2008. On June 16, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On June 16, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 24, 2008. 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 June 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on July 17, 2008.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on August 4, 2008. 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 Italian company in the field of sportswear and is part of a group which has registered and used the trademark HENRY COTTON'S since the 1980s.
The HENRY COTTON'S trademarks were originally owned by Sterdhil Consultadoria e Servicos Ltda of Madeira Portugal. In 2006 Sterdhil Ltda. changed its place of business from Portugal to Italy and was renamed Sterdhil S.r.l.. On December 12, 2006 Sterdhil S.r.l. merged into Marina Yachting S.p.A., a pre-existing company of the same group.
The Complainant (having recorded the foregoing changes with the various trademark authorities) owns, besides others, the CTM Registration for HENRY COTTON'S No. 821769 filed on May 12, 1998 and registered on October 4, 1999 for goods included in the International Classes 3, 9, 18 and 25 and the International Trademark Registration for HENRY COTTON'S No. 903495 registered on October 6, 2006 for goods included in the International Classes 3, 9, 18 and 25.
The Complainant is also the owner of several additional registrations for HENRY COTTON'S and HENRY COTTON'S design in numerous countries all over the world, since the 1980s.
The disputed domain name was registered on July 18, 1998.
When the Complaint was filed, the disputed domain name resolved to a webpage showing the message “503 Service Unavailable”.
5. Parties' Contentions
The Complainant contends that the trademark HENRY COTTON'S is a famous trademark and, consequently, the Respondent was aware of the trade name and trademark HENRY COTTON'S when he registered the domain name at issue.
The Complainant contends that the disputed domain name is identical to the trademark and trade name HENRY COTTON'S.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name. The Respondent is not associated in any way to the Complainant or its distribution network, and has never been commonly known by the trademark, trade name or domain name HENRY COTTON'S. Moreover, there is no evidence of a bona fide non commercial or other legitimate fair use by Respondent of the disputed domain name.
The Complainant contends that the Respondent's awareness of the renown of the Complainant's trademark, together with the absence of any connection with the trademark and the products distinguished by it, constitutes a finding of “opportunistic bad faith”.
Moreover, the Complainant contends that the Respondent uses the domain name in bad faith even if there is no use of the website by the Respondent nor an offer for selling the domain name. Indeed, the so-called “passive holding” of the domain name made by the Respondent, together with other circumstances listed in the decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, mentioned by the Complainant, constitutes, as in the present case, the use in bad faith required by paragraph 4(b) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the domain name registered by the Respondent 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 respect of the domain name; and
(iii) the domain name registered by the Respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant's trademark HENRY COTTON'S; the only difference is the adjunction of the suffix “.com”.
With regards to the suffix “.com” (which indicates that the domain name is registered in the “.com” gTLD), as it was established in many previous decisions (see A.P. Møller v.Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / firstname.lastname@example.org, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.
Therefore, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the domain name, such as:
(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate non commercial 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.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the domain name.
The Respondent is not associated in any way to the Complainant or its distribution network, and it has never been commonly known by the trademark, trade name or domain name HENRY COTTON'S.
Moreover, there is no evidence of a bona fide non commercial or other legitimate fair use by Respondent through the disputed domain name.
No Response was filed in the case and the Panel, in accordance with paragraph 14(b) of the Rules, draws the inference “that non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).
Therefore the Panel is satisfied that the second element is met.
C. Registered and Used in Bad Faith
The Panel finds that the domain name was registered and is being used in bad faith.
The Complainant's HENRY COTTON'S trademark and products are very widely-known not only in Italy (where the Respondent seems to have its website) but also in several other countries throughout the world.
Considering the widespread use and reputation of HENRY COTTON'S name and mark, the inherent distinctiveness of the mark, and Complainant's prior trademark registrations (dated back to the 1980's as demonstrated by the Complainant), the Panel believes that the Respondent was aware of it when it registered the disputed domain name and that the choice of the disputed domain name by the Respondent could not result from a mere coincidence.
The Panel shares the Complainant's opinion and in line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395), the Panel believes that, in the absence of any right or legitimate interest and lacking any contrary evidence by the Respondent, the Respondent's registration of a domain name identical to the Complainant's widely known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411 mentioned in the Complaint).
Concerning the use of the domain name, the Complainant has proven that the disputed domain name resolves to a webpage showing the message “503 Service Unavailable”.
Also with regard to this issue, the Panel shares the Complainant's view and, according to several precedents originated from the decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel believes that, in certain circumstances, the inaction in respect of a domain name registration can constitute a domain name being used in bad faith.
In the Panel's opinion, in the circumstances of this Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith.
(i) the strong reputation of Complainant's trademark and its widespread and international use;
(ii) the Respondent's failure to provide evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the default of Respondent's reply to the Complainant's contentions and that;
(iv) the registration of the domain name prevents its registration by the lawful trademark owner;
the Panel concludes that the Respondent's passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the domain name “is being used in bad faith” (see Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172 and Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615).
In addition, the Panel finds the Respondent's bad faith is also demonstrated by the provision of insufficient and false information about the Respondent's address and fax number to the Registrar. Indeed, the Respondent provided incorrect details to the Registrar, as is proved by the fact that due to insufficient postal address information available and incorrect fax number, the Center had to send to the Respondent the Notification of Complaint and Commencement of Administrative Proceeding together with the Complaint to the Respondent, only by e-mail.
In many prior UDRP decisions, it is established that the use of false contact information is an indication where other factors are present, as in this case, that the Respondent registered the domain name in bad faith (See Chanel v. 1, WIPO Case No. D2003-0218; Action Instruments, Inc v. Technology Associates, WIPO Case No. D2003-0024; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Royal Bank of Scotland Group v. Stealth Commerce v. a.k.a Telmex Management Services, WIPO Case No. D2002-0155; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; HomeDirector, Inc. v. Home Director, WIPO Case No. D2000-0111).
In light of all the above circumstances, the Panel is satisfied that the third element is met and that the domain name <henricottons.com> was registered and is being used 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, <henricottons.com> be transferred to the Complainant.
Dated: August 18, 2008