The Complainant is Gaudi Trade SpA of Italy, represented by Luppi Crugnola & Partners S.r.l. of Italy.
The Respondent is Transure Enterprise Ltd of Tortola, Virgin Ireland of Overseas of United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <gaudijeans.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2009. On July 31, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 3, 2009, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to the Complainant on August 5, 2009, providing the registrant and contact information disclosed by the Registrar also providing the correct Registrar name, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 6, 2009. 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” 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”).
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 August 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 27, 2009.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on September 2, 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, Gaudi Trade SpA, is an Italian joint-stock company, active in the fashion field since 1995.
According to the non-contested allegations of and to the evidence provided by the Complainant, the word “gaudi” is protected as a trademark in Italy and in various other countries of the world, through national and international registrations, most of them in or including Class 25 for clothing. The Complainant is also the owner of the trademark GAUDI JEANS & STYLE in Italy.
The Panel is unaware of any information with regard to the Respondent.
The Complainant contends that the disputed domain name is confusingly similar to its trademarks, that the Respondent has no legitimate interests or rights in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
Before engaging itself into the usual threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are obvious: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant's request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy (see FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668).
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
The Complainant has presented sufficient evidence that it owns the rights to the trademark GAUDI, even though evidence of this has been brought only through an internal computer database. The worldwide use of the mark over the Internet, especially through the Complainant's website “www.gauditrade.com”, reinforces this ownership. It is to be noted that the Respondent has registered a domain name, which incorporates in its entirety the trademark of the Complainant, together with the suffix “jeans”, a common term that reflects the Complainant's core business, disregarding in accordance with well-established practice the “.com” suffix. Confusing similarity is thus established, following the standard opinion of many previous panels.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name is identical or confusingly similar to the Complainant's trademark.
Under Paragraph 4(c) of the Policy any of the following circumstances, if found by the Panel to be proved based on its evaluation of the evidence presented, shall demonstrate a respondent's right to and legitimate interest in a domain name:
(i) Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute: in this case, the Respondent is not using the domain name for offering any goods or services, and by having a simple look at the website at the disputed domain name (full of clothing-related sponsored links) it is clear to this Panel that the Respondent had actually acquired the disputed domain name with the clear purpose of attracting Internet users to its site for commercial gain (i.e. pay-per-click revenue). It is worth noting that the Complainant states that it has no relations with the Respondent and has never authorized the latter to use the disputed domain name or any other domain name.
(ii) An indication that the registrant has been commonly known by the disputed domain name, even if it has acquired no trademark rights: there is no such indication from the record.
(iii) Legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue: there is no such indication from the record.
As a conclusion on this point, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant's argumentation aims to establish any of the four circumstances mentioned in paragraph 4(b) of the Policy, which would be enough to prove the Respondent's bad faith, since those will separately prove bad faith registration and use.
In reviewing the present case, the Panel has noted that the Respondent has used the website at the disputed domain name to redirect users to other websites, belonging to competitor entities of the Complainant. This clearly shows to the Panel that the Respondent knew, when registering the disputed domain name, of the existence of the trademark GAUDI and its affiliation to fashion, and more particularly, to jeans. It also proves that 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.
The bad faith of the Respondent may also be gathered through a simple, logical process, in the sense that it would, indeed, be highly unlikely that the Respondent could come up randomly and unintentionally with a word, such as “gaudi”, which appears in no dictionary and has apparently no meaning (other than as a surname), and register it as his own domain name, while combining it with the word “jeans”, which is the Complainant's core business.
As a consequence to the above, the Panel holds that the Respondent registered and used the disputed domain name in bad faith.
The Complainant has successfully proved that the disputed domain name is identical or confusingly similar to trademarks in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and used the disputed 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 <gaudijeans.com> be transferred to the Complainant.
Christos A. Theodoulou
Dated: September 16, 2009