The Complainants are Roberto Cavalli S.p.A. of Milan, Italy and IGA Finance B.V. of Amsterdam, The Netherlands, both represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati, Italy.
The Respondent is Anu Mohan of Düsseldorf, Germany.
The disputed Domain Name <roberto-cavalli-vodka.com> is registered with PSI-USA, Inc. dba Domain Robot.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2009. On June 11, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 12, 2009, the Registrar 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” or “UDRP”), 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”).
On June 15, 2009, the Center informed the Registrar that, as the Domain Name was set to expire on July 1, 2009, the Complainant would have the option in the event of expiration to renew or restore the Domain Name pursuant to paragraph 22.214.171.124 of the ICANN Expired Domain Deletion Policy (see “www.icann.org/en/registrars/eddp.htm”). On June 16, 2009, the Registrar notified the Center that the Registrar had renewed the Domain Name registration for one year and placed it in Registrar Lock status pending the outcome of this proceeding, thus preserving the status quo ante with regard to registration.
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 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 8, 2009.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 14, 2009. 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.
The Complainant Roberto Cavalli S.p.A. (“Cavalli”) is the principal operating company of the Cavalli Group. Since 1978, Cavalli has manufactured and sold luxury clothing and accessories created by the Italian fashion designer Roberto Cavalli. In recent years, the Cavalli Group has expanded beyond fashion apparel to a wider range of products. Since 2006, these include vodka and other alcoholic beverages, which are produced in Italy and sold internationally.
The Complaint recounts that, since 1997, the Complainant IGA Finance B.V. (“IGA”) has been the majority shareholder of the Complainant Cavalli. IGA currently owns the ROBERTO CAVALLI, CAVALLI, and CAVALLI SELECTION trademarks used to brand the Group's alcoholic beverages, including vodka, as well as other products.
The Complaint attaches numerous media articles and advertising from a variety of countries, illustrating the wide use of these marks and the international fame of the designer Roberto Cavalli and the company with which he is associated.
Also attached to the Complaint are copies of European Community and International Trademark registrations (dated from 1999 to 2008) and a schedule of more than 400 registered trademarks owned by the Complainant IGA that either consist of the name ROBERTO CAVALLI or feature that name prominently with a design or in stylized type. The earliest such trademark is found in Italy, where the word mark was registered on January 14, 1999 (Registration No. 769060). The trademarks are registered in many other jurisdictions, including Germany, where it appears that the Respondent is located (Registration No. 737870, registered May 24, 2000). Several other trademark registrations are for designs that feature the words CAVALLI or CAVALLI SELECTION.
The Complainants operate a number of websites, including one in Italian, English, and Russian at “www.robertocavallivodka.com”, which advertises the Complainant's ROBERTO CAVALLI Vodka beverages and features publicity photos and remarks of the designer Roberto Cavalli.
The Domain Name was registered on July 1, 2007. It differs from the domain name used for the Complainant's vodka website only by the addition of hyphens between the words. The Domain Name resolves to a predominantly German-language website that features the same stylized ROBERTO CAVALLI mark used on the Complainants' vodka website, as well as media photos of the designer Roberto Cavalli. The Respondent's website advertises bars and restaurants in several German and Austrian cities that offer ROBERTO CAVALLI Vodka (presumably in addition to competing alcoholic beverages) and events such as ROBERTO CAVALLI Vodka Nights and ROBERTO CAVALLI Vodka Club Tours at participating clubs, lounges, and other locations where the vodka is served. The website does not explicitly advertise products other than ROBERTO CAVALLI Vodka, but it includes photos, descriptions, and website links for several bars, restaurants, and other “Hot Spots”, including a fashion boutique that carries a variety of designer clothing and also hosts events featuring music and alcoholic beverages. There does not seem to be particularly current content anywhere on the website; the events to which it refers took place in 2007 and 2008.
A notice on the Respondent's website indicates that “Krug Investment & Distribution” of Düsseldorf, Germany is the importer and distributor of ROBERTO CAVALLI Vodka. The “Kontakt” (contact) page of the website gives an address for Krug Investment & Distribution (“Krug”) in Berlin, with a link to a website at “www.kruginvest.de”. The latter domain name resolves to a website identical to the Respondent's website associated with the Domain Name.
According to the Registrar's WhoIs database, the Respondent is an individual with a postal address in Germany and an email address in the “kruginvest.com” domain name, the same domain name shown in the contact details on the Respondent's website. The “Impressum” (masthead) page of the Respondent's website names Krug as the publisher and identifies the Respondent as the Geschäftsführer (managing director) of Krug. The website includes a copyright notice in the name of Krug but does not mention trademark rights or describe Krug's relationship with the Complainants, other than to refer to Krug as an importer of ROBERTO CAVALLI Vodka.
The Complainants state that they have no direct relationship with the Respondent or his company, Krug Investment & Distribution. The Complaint states, however, that “the Complainant” (without identifying which one) has a distribution agreement with an Italian company, Tuscany S.r.l., to distribute ROBERTO CAVALLI Vodka. The Complaint attaches a copy of an April 4, 2007 sub-distribution agreement between Tuscany S.r.l. and Krug, signed by the Respondent on behalf of Krug, under which Krug obtained the exclusive right to distribute ROBERTO CAVALLI Vodka in Germany, Austria, and Bulgaria. The “Intellectual Property” section of this agreement provides that Krug may use the ROBERTO CAVALLI trademark in “advertising, point of sale, or other marketing materials only with the prior written consent” of Tuscany S.r.l. The agreement also provided that on the expiry or termination of the agreement, Krug was to cease using the trademark except in disposing of stocks as agreed with Tuscany S.r.l.
A “Gentlemen Agreement” was executed the following day, April 5, 2007, by Tuscany S.r.l. and the Respondent (on behalf of Krug). This agreement was made a part of the sub-distribution agreement and established conditions that Krug was required to meet by June 30, 2007, failing which the sub-distribution agreement would become “null and void”. These conditions were a stated minimum amount of purchases by Krug, Krug's submission of a detailed marketing strategy, and meetings between Tuscany S.r.l. and Krug's personnel who would be involved in marketing and sales in Germany.
As reported in the Complaint, Tuscany S.r.l. has since sued Krug, asking a court in Florence, Italy to declare the sub-distribution agreement null and void. In that pending litigation, in which ownership of the Domain Name is not at issue, Tuscany S.r.l. invokes the provisions of the “Gentlemen Agreement” described above. Thus, Tuscany S.r.l. contends that the sub-distribution agreement with Krug became null and void as of July 1, 2007 – the day on which the Respondent registered the Domain Name.
The Complainants argue that the Domain Name is confusingly similar to the ROBERTO CAVALLI, CAVALLI, and CAVALLI SELECTION marks and that the Respondent was never authorized to use those marks in a domain name.
The Complainants contend that the Respondent registered and used the Domain Name in bad faith, in an effort to take advantage of the fame of the Complainants' marks for commercial gain.
The Respondent did not reply to the Complainants' contentions.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainants must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; 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.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Where multiple parties are named as complainants, their respective interests in the mark or marks at issue must be established, since this is the first ground for a UDRP complaint. Moreover, the complaint should indicate to which party the domain name should be transferred in the event that the complaint succeeds.
Here, the trademark registrations are in the name of the Complainant IGA. There is evidence that the Complainant Cavalli uses the marks under some sort of licensing arrangement, which has not been disclosed in this proceeding. The Complaint requests the transfer of the Domain Name to the Complainant IGA.
The Panel does not find that the Respondent has been prejudiced by the inclusion of the Complainant Cavalli in this proceeding. However, any order directed to the Registrar would refer only to the registered trademark holder, the Complainant IGA.
The Complainant IGA unquestionably owns numerous registered trademarks for ROBERTO CAVALLI, CAVALLI, and CAVALLI SELECTION. For purposes of this proceeding, it is sufficient to rely on the registered word mark ROBERTO CAVALLI.
The Panel finds that the Domain Name is confusingly similar to this mark. The addition of hyphens and the generic word “vodka” do nothing to avoid confusion, particularly since the Complainants advertise and sell vodka labeled with the ROBERTO CAVALLI mark.
The Panel concludes that the first element of the Complaint has been established.
The Complainants assert, and the Respondent does not deny, that the Complainants have never directly or indirectly authorized the Respondent's use of a domain name that is confusingly similar to the Complainant's marks. The Respondent's company, Krug, entered into a sub-distribution agreement with Tuscany S.r.l., a Cavalli distributor. But that agreement expressly precluded Krug from using the ROBERTO CAVALLI trademark or other intellectual property without prior written consent, of which there is no evidence. Moreover, it is currently disputed in an Italian court whether that agreement was even in force at the time the Domain Name was registered by Krug's managing director, in his own name.
Some UDRP panels have accepted that, even absent a license, a reseller or distributor may nonetheless establish under certain circumstances that its use of a manufacturer's mark in a domain name is a use “in connection with a bona fide offering of goods or services”. The criteria identified in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 have often been cited as indicia of legitimacy:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods;
- the site itself must accurately disclose the respondent's relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Here, the relationship between the Respondent's company and the Complainants is not accurately disclosed. The website associated with the Domain Name displays the Complainants' word and design marks but nowhere identifies them as trademarks of the Complainants. By using a Domain Name nearly identical to that used for the Complainants' vodka website and presenting a website with a similar appearance to that website, including photos and quotations of the designer Roberto Cavalli, the website gives the false impression of being associated with the Complainants. A notice at the bottom of the home page identifies Krug simply as an importer of the Complainants' products.
Moreover, the Respondent's company, a wholesale rather than retail distributor, does not use the website associated with the Domain Name expressly or exclusively to advertise its own offerings of ROBERTO CAVALLI beverages. Rather, the website highlights Krug's “partners” or rather customers – bars, clubs, restaurants, and a clothing store. Even assuming that they were featured because they served ROBERTO CAVALLI Vodka at some time, it is clear that these enterprises chiefly sell other products, produced by other manufacturers, some of them in competition with the Complainants. This is quite different from the circumstance, for example, of a PORSCHE automobile dealer using the PORSCHE trademark in its domain name for a website devoted exclusively to sales and servicing of PORSCHE automobiles. See Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481.
Although the Complainants bear the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainants have made a prima facie showing, as they have in this case. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. The Respondent has not done so, and the record casts doubt on any possible claims of a legitimate interest in the Domain Name.
Accordingly, the Panel concludes that the Complainants have established the second element of the Complaint.
Paragraph 4(b)(iv) of the Policy lists the following as an instance of bad faith:
“circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 Respondent's company, Krug, claims on the website associated with the Domain Name that it is an importer of ROBERTO CAVALLI Vodka. It also indicates that it has commercial relations with the bars, clubs, restaurants, and fashion boutique featured on the website associated with the Domain Name. Thus, the Domain Name has clearly been used for commercial gain.
As detailed above, the Respondent's Domain Name and the associated website itself are both confusingly similar to the Complainants'. The Respondent's company, Krug, was (at least for a time) a subdistributor of the Complainants' products, and the website continues to display the Complainants' word and design marks. Thus, the Respondent had actual knowledge of the Complainants' marks, and it is a fair inference that the Respondent registered and used the Domain Name precisely because the distinctive and well known ROBERTO CAVALLI mark would attract Internet users, especially those interested in the alcoholic beverages branded with that mark.
From the record available in this proceeding, it appears that the Respondent did so without authorization from the trademark owner. He registered the Domain Name in his own name, possibly on behalf of Krug (although there is no actual evidence of that in the record), at a time when Krug was either under an express contractual obligation to obtain prior written consent to use the Complainants' marks or when its entire agreement to distribute ROBERTO CAVALLI Vodka had just that day become “null and void”, as the primary distributor now contends in an Italian judicial proceeding. In either case, neither Krug nor the Respondent as an individual would have a defensible, good-faith basis for registering and using a Domain Name incorporating the Complainants' mark.
The Panel concludes that the Domain Name was registered and used in bad faith within the meaning of paragraph 4(b)(iv) 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 <roberto-cavalli-vodka.com> be transferred to the Complainant IGA Finance B.V.
W. Scott Blackmer
Dated: July 17, 2009