WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
European Suits and Shirts AB v. Enes Eyup Aksuoglu
Case No. D2010-2248
1. The Parties
The Complainant is European Suits and Shirts AB of Solna, Sweden, represented by Nord & Co Advokatbyrå KB, Sweden.
The Respondent is Enes Eyup Aksuoglu of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <brogetti.com> is registered with Nics Telekomünikasyon Tic. Ltd. Şti.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2010. On December 22, 2010, the Center transmitted by email to Nics Telekomünikasyon Tic. Ltd. Şti a request for registrar verification in connection with the disputed domain name. On December 24, 2010, Nics Telekomünikasyon Tic. Ltd. Şti. 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”).
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 January 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2011. The Respondent submitted email communications on January 10, 17 and 18, 2011 regarding this matter but did not submit any formal response.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on February 17, 2011. 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.
In accordance with paragraph 11 of the Rules, the Panel has determined the language of proceedings shall be English, taking account of the circumstances of the case and the fact that the Respondent appears to have knowledge of the English language. The Respondent did object to the Complainant’s language request. However, on balance, the Panel does not find that any prejudice would occur if the language of proceedings were to be English since all case-related communications regarding this matter were also sent to the Respondent in Turkish. In light of the specifics of this case, the Panel finds that the English language selection is indeed appropriate.
4. Factual Background
The Complainant has used the trademark BROGETTI for the sale and marketing of clothes and related products since 2007, mainly in Sweden, Norway and the island of Aaland. The Complainant now owns 5 stores in Sweden, and also sells its products through third party resellers and online. Since 2007, the Complainant has sold clothes for over SEK 10 million. The Complainant owns the domain names <brogetti.se>, <brogetti.eu>, <brogetti.net> and <brogetti.org>.
The Complainant owns the following BROGETTI trademarks:
the Swedish trademark registration BROGETTI, Registration No. 0393096, which was registered in 2007 for clothes in class 25.
the community trademark BROGETTI, Registration No. 009070517, which is registered for cufflinks and tie clips in class 14 and clothes, footwear and headgear in class 25.
the United States trademark application for BROGETTI, Application No. 85029197, for clothing, including men’s ties, footwear and headgear in class 25.
The disputed domain name was created on October 28, 2009.
5. Parties’ Contentions
According to the Complainant, the disputed domain name <brogetti.com> is identical or confusingly similar to the registered trademark BROGETTI, which has been registered by the Complainant as a trademark and domain names.
Also, the addition of the top-level domain (TLD) “.com” does not have any impact on the overall impression of the dominant portion of the domain name and is therefore irrelevant in determining the confusing similarity of the domain name to the trademark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In support of this allegation, the Complainant states that the Respondent has never been known by this name, and the Complainant adds that the Complainant has never licensed or otherwise permitted the Respondent use its trademarks or to register any domain name containing the above-mentioned trademark.
The domain name was registered and is being used in bad faith.
The Complainant stated that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The Respondent did not formally reply to the Complainant’s contentions, although it did submit an email communication to the Center on January 18, 2011 indicating, inter alila, the following:
“2- biz Türkiye’de çorap sektöründe iş yapan bir firmayız. Burada üretime başlamak için kendi markamızı oluşturmak istedik. Ve şikayetçi olan tarafın bu markayı kullandığını bilmeden kendi üreteceğimiz çoraplar için brogetti isminin web alanını satın aldık, markanın patentini almak için tüm hazırlıklarımızı yaptık. Türkiye’ de web alanı ve marka kullanılmıyor satın alınabilir durumda. Bütün bunları yapabilmek içide zaman ve maddi olarak masraflar yaptık. Sanıldığı gibi yurtdışında kullanılan brogetti markası ile hiçbir ilgimiz ve kendilerinden kötü amaçlı ticari isteklerimiz olmamıştır ve yoktur. Bundan sonra brogetti.com web adresini ve markasını kullanmamız istenmiyor ise harcadığımız zaman ve masrafların karşılığının ödenmesini istiyoruz.”
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered the trademark BROGETTI as a trademark in several countries. The Complainant has also registered the trademark BROGETTI as a domain name.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
Additionally, in the Panel’s view, the Respondent has brought no convincing argument to support the contention that the disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. The Respondent has not demonstrated to the satisfaction of the Panel any bona fide offering of goods and services by its using the disputed domain name and has not rebutted the Complainant’s prima facie case that it has no rights or legitimate interests. Nor has the Respondent shown that it has been commonly known by the disputed domain name. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks right or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Although the Respondent denies it, the Panel finds, on balance, that when the Respondent registered the disputed domain name it must have known the Complainant and that BROGETTI was the trademark of the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration and use, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.
Based on the circumstances, in the Panel’s view, it is reasonable to infer that when the Respondent registered the disputed domain name, it likely knew that the domain name incorporated the trademark of the Complainant. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that this knowledge may be considered, in appropriate cases, also an indication of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). The disputed domain name has been directing to a website displaying commercial links to third party websites which are not related to the Complainant.
Thus it is obvious to this Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent has also demonstrated bad faith by trying to sell the domain name to the Complainant for EUR 100,000, when approached by the Complainant.
In view of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, in accordance with paragraph 4(a)(iii) 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, <brogetti.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Dated:March 3, 2011