WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Luisa Spagnoli S.p.a. v. Domain Discreet / Liana Buonanno

Case No. D2011-0375

1. The Parties

The Complainant is Luisa Spagnoli S.p.a. of Perugia, Italy, represented by Studio Professionale Associato a Baker & McKenzie, Italy.

The Respondent is Domain Discreet of Madeira, Portugal / Liana Buonanno of New York, NY, United States of America represented by Liana Buonanno, United States of America.

2. The Domain Name and Registrar

The disputed domain name <luisaspagnoli.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2011. On February 28, 2011, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On February 23, 2011, Register.com 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 March 3, 2011 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 amended Complaint on March 7, 2011. The Center verified that the Complaint together with the amended 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 March 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2011. The Response was filed with the Center on March 28, 2011.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 14, 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.

4. Factual Background

The Complainant is an Italian Company operating in the fashion clothing business. It appears to have been operating since the 1950s and 1960s. It markets its products from shops located in twenty countries under the Trademark “Louisa Spagnoli”. It has sixty trademark registrations in more than fifty countries. These include:

(a) International Registration for LOUISA SPAGNOLI filed on January 25 1996 No. 308 163 in International Classes 23,24 and 25;

(b) US Trademark Capital No. 944, 743, 4 LOUISA SPAGNOLI registered from October 10, 1972 in International Classes 23, 24 and 25;

The whois search shows that the disputed Domain name was first registered on March 2, 2000. However, the evidence submitted by the Respondent shows that the disputed domain name was transferred and first registered by her on April 10, 2010 as a result of some sort of auction process.

The Complainant maintains a website at “www.louisaspagnoli.it”. This website provides information about the Complainant and its products only. It does not offer goods for sale from the website. Under the Export Tab of the Complaint’s website appears the following text:

“Are you interested in promoting our brand in your country? Louisa Spagnoli works in overseas markets through a network of single-brand or multi-brand partners. If you would like to find out more about our business plan for your country don’t hesitate to contact us!”

It appears that, in response to this “invitation”, the Respondent sent an email to the Complainant on or about March 10, 2010 with the following request:

“What are the company current distribution plans, if any, in the United States?”

Next day, the Complainant replied by email:

“We are currently looking for a distributor/partner for the states”.

The Respondent then sent a second email indicating an “understanding” that the client was in negotiation with a potential partner and stating that “I am just trying to evaluate the situation before I invest my time.” The Complainant replied (the fourth email in the exchange) inviting the Respondent to telephone the Complainant’s representative or alternatively to provide a telephone number for the Complainant’s representative to telephone the Respondent. The record does not disclose any further correspondence or communications as part of this exchange.

The disputed domain name has not resolved to an active website since the Respondent acquired it. However, the disputed Domain name has resolved to a website which simply states:

“Domain for sale”.

The website then provides contact details for one “Roman” who appears to be some kind of domain name broker.

In December 2010, the Complainant contacted the Respondent through the Complainant’s own broker. Through that broker, the Complainant offered to “purchase” the disputed domain name from the Respondent for USD 850. (In fact, the broker offered the Respondent the sum of USD 765.00 net). This offer, however, was rejected. Instead, the Respondent replied:

“I would be interested in selling the Domain name to the company in exchange for a distribution agreement in the US. The company should contact me directly to discuss.

It does not appear that anything came of this approach.

In February 2011, the Complainant’s lawyers contacted Mr. “Roman” by email, offering to pay 500 Euros in exchange for the immediate transfer of the disputed domain name. On behalf of the Respondent, Mr “Roman” responded, rejecting the offer. Materially, he wrote in his email:

“Unfortunately the offer is too low to even counter offer. The owner has no interest in that offer - in completely different areas of valuation.”

Subsequently, the Complainant filed this complaint.

5. Discussion and Findings

For the Complainant to succeed, paragraph 4(a) of the Policy requires that the Complainant prove that:

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 disputed domain name;

iii) The disputed Domain name was registered in bad faith and is being used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and principles of law deemed applicable.

A. Identical or Confusingly Similar

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be identical or confusingly similar to that trademark.

The Complainant has clearly established ownership of the registered trademarks referred to in section 4 above. All of these registered trademarks were registered long before the Respondent registered the disputed domain name.

The disputed domain name is identical to the Complainant’s registered trademarks apart from the addition of the gTD, .com. However, it is well established that the addition of the gTLD can be disregarded for the purposes of this inquiry as it is a functional requirement of the domain name system. See for example, Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. Discovernet, Inc., WIPO Case No. D2001-0252.

Accordingly, the Complainant has established the first ground under the Policy.

B. Rights or Legitimate Interests

The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

As this requires the Complainant to prove a negative and relevant information is often only in possession of the Respondent, it is now well established that a complainant must provide sufficient evidence to establish a prima facie case against the respondent and, if such a prima facie case is established, a burden of production shifts to the respondent to rebut the allegation.¹ Paragraph 4(c) of the Policy sets out examples of rights or legitimate interests.

In the present case, the Complainant points out it has not assigned or licensed its trademarks to the Respondent or in any other way authorized the Respondent to register or use the trademarks in any manner. Nor is the Respondent commonly known by the sign comprised in the disputed domain name. Nor does the Respondent own a registered trademark for the sign in the disputed domain name. These facts, together with the extent and long standing trademark registrations owned by the Complainant are clearly sufficient to raise a prima facie case against the Respondent.

The Respondent does not dispute any of these allegations directly. Rather, the Respondent contends that she registered the disputed domain name in connection with her negotiations with the Complainant (in March 2010) for a partnership and distribution of the Louisa Spagnoli brand in the United States. The Respondent contends that she was developing a detailed business plan in connection with those negotiations. Part of that development work included retaining a professional firm to evaluate and develop a design for a website from which the Complainant’s products could be offered for sale online. The Respondent says she plans to submit the proposal, once developed, to the Complainant for any approval before starting work on the construction of the site or offering goods for sale and says further that:

“The site was fully intended to be for sale of only trademarked goods, accurately disclosing the relationship with the trademark as appropriate, as the development of the Louisa Spagnoli brand name in the United States was the basis of the business venture.”

The Respondent further contends that, since the disputed domain name was available for purchase and the Complainant had made plain its intention to undertake overseas distribution through brand partners only, the Respondent “could only presume that the Complainant did not want to own the [disputed domain name]”.

In support of these claims, Annex E lists a number of expenditures made by the Respondent in acquiring and preparing to exploit the disputed domain name. These include an amount of USD 1,200 for acquisition of the disputed domain name at auction, USD 201.97 for a 5 year extension period, USD 1,500 for the engagement of a third party to develop a plan for an E-commerce site, USD 250 for the engagement of a third party to create a website announcing “availability” of the [disputed] domain name and to monitor communications, and USD 500 for consultation with legal advisors upon receipt of the original complaint.

The Respondent says that she is willing to submit her draft business plan to the Panel on terms of confidentiality.

She has also submitted as annexes to the Response print outs from the HAY Group and Market research.com. These print outs appear to be quotes or price lists for the provision of various expert reports these companies offer generally for purchase by interested members of the public. The response also contains photographs of items of clothing that the Respondent says she purchased to test the market for the Complainant’s products.

Many panels have previously accepted that a distributor or re-seller may have rights or legitimate interests in a domain name for the purposes of the Policy in particular circumstances.² These usually require at least that the distributor or re-seller is actively engaged in distribution or has very advanced plans for such activity.

In this case, however, the extremely limited communications between the Complainant and Respondent in March 2010 (set out above), before the Respondent acquired the disputed domain name, are far too tenuous a foundation for the Respondent to claim rights or legitimate interests in the disputed domain name. Moreover, the Panel rejects the Respondent’s proposed presumption that she was entitled to register the disputed domain name from the notice on the Complainant’s website inviting prospective distributors in overseas markets to contact it for further negotiations, whether this invitation is considered alone or combination with the availability of the disputed domain name for purchase at auction. Whatever stage the draft plans the Respondent has been working on have reached, there was nothing in the exchange with the Complainant as revealed on the record in this case by which the Complainant encouraged or induced her to so act. The Complainant did not give her any basis on which to expect an appointment as the Complainant’s distributor or to proceed in the way she did. Rather, the Respondent appears to have adopted the Complainant’s trademark unilaterally and wholly speculatively. There is nothing in the record to suggest that the Respondent has any experience or involvement in the fashion clothing business or the section of the market the Complainant targets.

Accordingly, the Panel finds that the Respondent has not displaced the prima facie case against her and so, the Complainant has established the second requirement under the Policy.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In this connection, paragraph 4(b) of the Policy provides a number of examples illustrating registration and use in bad faith.

The Complainant relies on the passive holding of the disputed domain name, the website page offering the disputed domain name for sale and the Respondent’s rejection of the Complainant’s offers to acquire the disputed domain name first for US 850.00 (or USD765.00 net) and secondly for 500 Euros, to establish both registration and use in bad faith.

The Respondent contends that she registered the disputed domain name solely for the purpose of serving as a brand distributor in the United States market “consistent with the Complainant’s overseas strategy as advertised on its website”. In furtherance of that purpose, the Respondent says she has spent thousands of dollars in formulating a detailed business plan as “required and requested by the Complainant during the original discussions, only to potentially serve as the Complainant’s distributor in the United States market”. In addition, the Respondent states that she was further justified in rejecting the Complainant’s offer because the Complainant did not inquire into or take into account any of her expenses related to the disputed domain name.

The terms of the Complainant’s website inviting potential distributors to contact it and relevant extracts from the correspondence between the parties (in so far as they form part of the record in this case) have been set out in section 4 above.

Essentially, in response to the invitation on the Complainant’s website, the Respondent initiated contact asking what were the Complainant’s plans for the United States of America. The entirety of the correspondence amounted to 4 emails (including the initial request from the Respondent) comprising some 7 or 8 lines of text apart from formal matters. As noted above, the exchange lapsed after the Complainant’s email on March 18, 2010 requesting that the Respondent telephone or provide a telephone number for the Complainant to call her on. The Respondent did not follow up this invitation in any way. The Respondent did not (on the record in this case) respond in any way.

Instead, the Respondent unilaterally acquired the domain name (apparently at auction) some three weeks later. The Respondent did this of her own motion and without recourse to the Complainant.

The Respondent also points to the fact that the Complainant’s Italian website does not offer goods for sale and, until she herself purchased the disputed domain name, the Complainant could have purchased it at auction as well. These facts, together with the invitation on the Complainant’s website for people interested in distributing Complainant’s products overseas are said to have left the Respondent with “no option” but to presume that the Complainant was not interested in the disputed domain name and (the Panel infers) the Respondent was therefore entitled to register it.

The Panel does not agree that the circumstances relied on by the Respondent lead to the conclusions she wishes to draw. The fleeting contacts described above are far too tenuous to be characterized as “negotiations” which would provide the Respondent with any reasonable basis for believing she was entitled to register the Complainant’s Trademark as a domain name.

Further, the Panel notes that nothing in the invitation on the Complainant’s website or the very brief exchange of emails between the parties in March 2010 provides a factual basis for the Respondent’s contention that the thousands of dollars she says she spent acquiring the disputed domain name and apparently developing a detailed business plan was either undertaken or embarked upon at the “request” or “requirement” of the Complainant.

Importantly, when the Respondent rejected the Complainant’s initial offer, the Respondent did not seek to justify that rejection by reason of its failure to cover her legitimate out of pocket expenses. Instead, she responded as follows:

“I would be interested in selling the domain name to the company in exchange for a distribution agreement in the US.

To this Panel, this exchange in context reveals the Respondent’s intention as having been to register and use the disputed domain name to extract whatever commercial value she could from it. Realistically, any commercial value the disputed domain name had derived from its resemblance to the Complainant’s Trademark. That is, the Respondent, who was plainly aware of the trademark significance of the name when she acquired it, sought to take advantage of its trademark significance without any right or legitimate interest in it.

In these circumstances, the Panel finds that the Respondent registered the disputed domain name in bad faith and has been using it since registration in bed faith.

Accordingly, the Complainant has established the third requirement under the Policy.

7. Decision

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 <luisaspagnoli.com>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Dated: April 28, 2011

¹ Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.

² See for example paragraph 2.3 of the WIPO Overview.