WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G&P Net S.p.A. v. Kenn Lee
Case No. D2011-0122
1. The Parties
The Complainant is G&P Net S.p.A. of Altopascio (LU), Italy represented by Società Italiana Brevetti of Italy.
The Respondent is Kenn Lee of People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <peutereys.com> is registered with Web Commerce Communications Limited dba WebNic.cc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2011. On January 24, 2011, the Center transmitted by email to Web Commerce Communication Limited dba WebNic.cc a request for registrar verification in connection with the disputed domain name. On January 28, 2011, Web Commerce Communications Limited dba WebNic.cc. 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 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2011.
The Center appointed David Stone as the sole panelist in this matter on February 24, 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.
The language of the proceedings is English.
4. Factual Background
The Complainant is in the business of producing, marketing and selling articles of clothing and accessories for men, women and children under the trademark PEUTEREY since as early as 1997. The Complainant has stores in over 15 countries of the world, including in Europe and Asia.
The Complainant owns over 20 trademark registrations around the world for the word PEUTEREY, with trademark rights dating from 1995. The Complainant’s trademark registrations include an International Registration designating China, among other countries.
The disputed domain name was registered on November 12, 2010. The disputed domain name directs to a website selling clothing, inter alia, under the registered trademark of the Complainant.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its registered trademark PEUTEREY because it consists of the Complainant’s well-known mark with the addition of the letter “s”. The addition of the letter “s” does not alter the virtual phonetic, graphic and conceptual identity of the Complainant’s trademark and that of the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, nor has he acquired any trademark rights in China for the mark PEUTEREYS or any similar marks in connection with any goods or services prior to or since the registration of the disputed domain name.
The Complainant submits that the Respondent is not commonly known by the disputed domain name and does not trade under the name “peutereys”. The Complainant submits that it has established rights in the trademark PEUTEREY globally. The Complainant alleges that the goods on offer through the Respondent’s website are counterfeit and even if not counterfeit, there is no record of any agreement between the Respondent and the Complainant with regard to use and/or registration of the trademark “PEUTEREY” or the disputed domain name.
Further, the Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet traffic to its web site by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the web site. The Complainant further submits that the Respondent intentionally attempted to create a false association, sponsorship or endorsement with or of the Complainant in order to trade off the goodwill and reputation of the Complainant.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name 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 disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant provided evidence that it has registered rights in the word PEUTEREY, including in the Respondent’s country, China. The Panel therefore finds that the Complainant has rights in the trademark PEUTEREY.
The addition of an “s” to the Complainant’s trademark does not assist the Respondent: the disputed domain name remains confusingly similar to the Complainant’s trademark.
The “.com” suffix at the end of the domain name is to be disregarded, as this is simply part of the Internet address and does not add “source-identifying significance”: see further Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728 and Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202.
Accordingly the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Guidance in relation to establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy.
Three circumstances are identified:
(i) bona fide prior use;
(ii) common association with the domain name; and
(iii) legitimate noncommercial use.
The Complainant has made a prima facie case that none of these circumstances applies. The Respondent did not exercise the right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant (or advance any other argument supporting rights or legitimate interests).
Accordingly the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Guidance regarding establishing bad faith is provided in paragraph 4(b) of the Policy.
Four (non-exhaustive) circumstances are identified where the respondent’s intention in registering a domain name may provide evidence of bad faith. These intentions may be summarised as follows:
(i) to sell the domain name to the rights holder at a profit;
(ii) to prevent the rights holder registering a domain name;
(iii) to disrupt the business of a competitor; and
(iv) to divert Internet traffic.
The Complainant refers to the last two circumstances. The Respondent has not submitted any counter-arguments.
A screenshot of the website at the disputed domain name shows PEUTEREY branded clothing available for sale. The Panel, therefore, finds that in all likelihood the Respondent was aware of the Complainant’s trademark at the time the disputed domain name was registered. The products shown on the website are all identified by the Complainant’s trademark. Further, the website uses the Italian language to claim that the site is the official site of the Complainant. Applying the comments of the panellist in L’Oreal, Biothern, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, the Panel therefore finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s mark.
Accordingly the Panel finds that the Complainant has established element 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <peutereys.com> be transferred to the Complainant.
Dated: March 8, 2011