The Complainant is La Rinascente S.r.l. of Milan, Italy, represented by Studio Legale Bird & Bird, Italy.
The Respondent is Contactprivacy.com/P.R. van der Kolk, Animal Rights Media of Toronto, Ontario, Canada and Assen, Netherlands, respectively.
The disputed domain name <larinascente-vendemorte.net> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2010. On May 18, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On May 18, 2010, Tucows 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 email communication to the Complainant on May 27, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint one June 1, 2010. 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 June 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 25, 2010.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on July 1, 2010. 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.
Regarding the language of the proceeding, the Center ascertained from the Registrar that the language of the Registration Agreement is English. Accordingly, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English, i.e., the language of the registration agreement.
The evidence submitted by the Complainant, which, in the absence of any Response by the Respondent remains undisputed, indicates that the Complainant, a limited liability company organized under the laws of Italy, is an Italian retailer, founded in Milan in 1865, owning and operating a chain of 13 upscale department stores selling clothing, household and beauty products, located in Italian major cities. It is part of the well-known group “laRinascente” which assumed the present company name in 1917.
As part of its business, the Complainant has secured a variety of Italian, International and Community trademark registrations for the marks La Rinascente and Rinascente, the earliest one dating back to 1987. It also the registrant, since 1996, of several domain names including as distinctive sign either the RINASCENTE or La RINASCENTE trademarks.
The disputed domain name was registered by the Respondent on November 23, 2009.
(i) The Complainant contends that the disputed domain name is identical to and confusingly similar to the Complainant's marks, because it incorporates in its entirety the Complainant's registered marks with the mere addition of the expression “vendemorte” which is not the distinctive element of the disputed domain name, and which means in Italian “sells death”.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, since the Complainant never authorized the Respondent to use its distinctive signs constituted by or including the “Rinascente” or “la Rinascente” or “laRinascente” names.
(iii) The Complainant contends that the Respondent's bad faith registration and use of the disputed domain name is established by the fact that the latter is not used for a commercial aim but to slander and tarnish the Complainant's reputation.
(iv) The Complainant requests that the disputed domain name be cancelled.
The Respondent did not reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, the Complainant has the burden of establishing that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under paragraph 14(b) of the same Rules, the Panel is empowered to draw such inferences from the Respondent's default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainant.
In particular, by defaulting and failing to respond, 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 any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant's arguments that the Respondent has acted in bad faith.
In comparing the Complainant's marks to the disputed domain name, it is evident that the latter, <larinascente-vendemmorte.net>, consists solely of the Complainant's trademark “laRinascente”, followed by the non-distinctive expression ‘vendemorte' and the generic term “net”. The addition of generic terms does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
Moreover, a domain name consisting of a trademark and a negative term may be confusingly similar to trademark. Confusing similarity has been found because the domain name contains a trademark and a dictionary word; or because the disputed domain name is highly similar to the trademark; or because the domain name may not be recognized as negative; or because the domain name may be viewed by non-fluent English language speakers, who may not recognize the negative connotations of the word that is attached to the trademark. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 and Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003-0596.
The Panel finds that the disputed domain name is identical to the Complainant's LaRINASCENTE mark, despite the addition of the “vendemorte” expression, irrespective of the fact that the disputed domain name may indeed generate confusion among non-Italian speaking internet users, who may not recognize the negative connotation of the expression “vendemorte” attached to the Complainant's LaRINASCENTE mark.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Although the Complainant bears 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) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing (as it has in this case). See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Respondent did not submit a Response, and the Respondent offered no reason for selecting the disputed domain name other than what is stated on the disputed domain name's web page. There is no evidence that the Respondent is known by a corresponding name or uses a corresponding name in a business. The website associated with the disputed domain name is apparently protesting the continuing rental, by certain stores owned and operated by the Complainant, of corners where fur-lined garments are sold, which indicates a non-commercial use of the disputed domain name. The question thus is whether such use can be deemed fair use, for instance on free speech grounds.
In the event that a domain name confusingly similar to a trademark is being used for a genuine noncommercial free speech website, most panels have held that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner's registered trademark or conveys an association with the mark. See Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776; The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166; Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., WIPO Case No. D2004-0136.
Even in those cases where panels held that free speech justifies finding on balance that the respondent has a legitimate interest in the disputed domain name, it seems that the respondent's protest and term or expression deriding the complainant's trademark were closely connected with the complainant's activity, which element would be lacking in this case, where the Complainant's department store business and its trademarks are not known because of their trading in furs.
Since the Respondent has not submitted a Response or provided any evidence or arguments in this proceeding, the Panel concludes that the Complainant has established the second element of the Complaint.
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant's arguments that the Respondent has acted in bad faith.
In this case, the Respondent, who hid his identity, registered the disputed domain name years after the Complainant began using its registered mark in Italy, and did so purposely.
The Panel also notes that although using a proxy service to hide the identity of the registrant is not per se conclusive of bad faith registration and use (see Trinity Mirror PLC and MGN Ltd v. Piranha Holdings, WIPO Case No. D2008-0004), this fact added to the Respondent's criticism of the Complainant's business conduct on the disputed domain name's web page is strongly indicative of bad faith.
The Panel concludes in the present circumstances that the Respondent registered and is using the disputed domain name in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 <larinascente-vendemorte.net> be cancelled as requested by the Complainant.
Louis-Bernard Buchman
Sole Panelist
Dated: July 12, 2010