WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dolce & Gabbana S.r.l. v. Domains by Proxy, Inc. / Renee Carr
Case No. D2011-0597
1. The Parties
The Complainant is Dolce & Gabbana S.r.l. of Milano, Italy, represented by Studio Turini, Italy.
The Respondent is Domains by Proxy, Inc. / Renee Carr of Scottsdale, Arizona, United States of America and San Francisco, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <dolcegabbanaapparel.com>, <dolcegabbanaclothing.com> and <dolcegabbanaclothingstore.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2011. On April 4, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On April 5, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 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 April 15, 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 April 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2011.
The Center appointed Adam Samuel as the sole panelist in this matter on May 20, 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 the exclusive licensee of a number of trademarks owned by one of its sister companies, Gado Srl, notably, United States trademark registrations for DOLCE & GABBANA, number 1418412 registered on November 25, 1986. The disputed domain names were all registered on December 24, 2010.
5. Parties’ Contentions
This section sets out the Complainant’s contentions with which the Panel may or may not agree.
“Dolce” and “Gabbana” are the last names of the two famous stylists Domenico Dolce and Stefano Gabbana, founders of the “Dolce & Gabbana” design house. The Complainant is the exclusive licensee (of numerous trademarks DOLCE AND GABBANA. “Dolce & Gabbana” is also the Complainant’s company name.
DOLCE AND GABBANA is one of the most famous trademarks in the world in the field of fashion and it is a well-known trademark all around the world, for “clothing” and obviously for “apparel”. The disputed domain names and the Complainant’s trademarks are confusingly similar. In fact, they are composed of the same root of the Complainant’s trademarks and website with the added suffixes “clothing”, “clothingstore” and “apparel”. Those suffixes do not extenuate the likelihood of confusion with the Complainant’s mark. On the contrary, they increase the likelihood of confusion as they are clearly describing the field in which the Complainant is known for.
The Respondents are not commonly known by the disputed domain name. The Complainant has absolutely no connection with the Respondents and in no way has authorized, licensed or otherwise allowed them to use its trademark or to apply for any domain name incorporating its trademark under any circumstances.
There is also no evidence of the Respondents’ use of, or demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services. The disputed domain names were selected by the Respondents with the clear intent of making commercial gain by selling them to the highest bidder in an auction (the first Respondent), or by using them as generic holding pages (both Respondents).
When an Internet user visits the disputed websites, he or she is directed to three parked pages, showing advertisements of different products and services in direct competition with the Complainant’s products. DOLCE & GABBANA is a worldwide famous trademark, and so it is extremely confusing for a consumer who is searching for a website including the Complainant’s trademark, to arrive at the Respondents’ site with advertising for various competing services and goods. This is a definite diversion of potential Complainant’s consumers.
The trademark DOLCE & GABBANA, in fact, is a worldwide famous trademark. Given that, we can hardly believe that the Respondents were not aware of the existence of the Complainant’s trademarks and reputation before registering the disputed domain names (December 2010), and this proves the “mala-fides” of the Respondents.
The very use of a well-known trademark by someone with no connection with the products suggests opportunistic bad faith. In fact, there is absolutely no evidence of any reasonable efforts made by the Respondents in order to find out about third party rights in the disputed domain names. They would only have had to type the word “dolcegabbana”, or even “deg”, on a search engine to realize that it is a worldwide famous trademark, owned by the Complainant. The Respondents aquired and are using the disputed domain names in bad faith, primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the highest bidder.
The disputed domain names were selected by the first Respondent with the clear intention of commercial gain, to be achieved by selling them to the highest bidder in an auction. This is confirmed by several emails sent to a potential purchaser (in this case authorized to buy the domain names for the Complainant).
The Respondents have not acquired nor used the disputed domain names in connection with a bona fide offering of goods or services. They just use the disputed domain names to direct Internet users to a pay-per-click parking page that includes links to direct and indirect competitors of the Complainant. This constitutes intentional use of a domain name for commercial gain to attract Internet users to a website by creating consumer confusion with the Complainant's mark with respect to the Complainant as source, sponsor, affiliate or endorser of the Respondents’ websites. Internet users would be substantially less likely to visit Respondents’ websites were it not for its use of the Complainant's mark to attract those visitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed 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 has the exclusive right to use the trademark DOLCE & GABBANA. This trademark, consisting of two Italian surnames is extremely well known internationally in the area of fashion. UDRP case law has long reached a consensus that an exclusive licensee has rights in a trademark for the purposes of the Policy. The disputed domain names reproduce the trademark in which the Complainant has rights for this purpose with only the omission of the ampersand and with the addition of generic words which relate to the Complainant’s clothing business and the standard suffix “.com”. For these reasons, the Panel concludes that the disputed domain names are all confusingly similar to the trademark DOLCE & GABBANA in which the Complainant has rights.
B. Rights or Legitimate Interests
Neither Respondent is called “Comerica” or anything similar. Nor do they appear to trade under that or any related name. There is no evidence that the Complainant or any company within its group has ever authorized the Respondents to use its COMERICA trademark. The Respondents have never asserted any rights or legitimate interests in that name. For these reasons, on the basis of the available record, notably the absence of a Response, the Panel concludes that the Respondents have no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The DOLCE & GABBANA trademark is extremely well known particularly in the area of fashion. The first Respondent (who may be the same person as the second Respondent) registered three domain names that use this trademark with generic words relating to clothing. The second Respondent acquired the disputed domain names from the first presumably with the same knowledge of the trademark and its association with clothing.
There was an exchange from the e-mail address used by both Respondents on January 25, 2011 in which the Respondents indicated in response to an approach about buying the disputed domain name <dolcegabbanaapparel.com> that “This domain will make a lot of money for me, because I also have a distributor. What is your offer in American dollars for all 3 domain names?” To a follow-up e-mail, the Respondent e-mail address said: “I was going to build a very successful business and then sell it to the highest bidder in an auction. Let me know how much is their offer, and I will tell you if it’s worth it or not for me to sell.”
In this Panel’s view, it is impossible, at least without a Response to the Complaint, to identify a reason why the first Respondent registered the disputed domain names and the second Respondent received the transfer of them other than to attract business or Internet users to its site who were looking for a site connected to the Complainant’s trademark or business.
As the panel said in BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882:
“The ordinary rule on registration is that transfer to a new registrant constitutes “registration” for purposes of paragraph 4(a)(iii)'s determination of bad faith. Indeed it is a Consensus View that “While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith.”
One can see from this that the second Respondent has to be treated for the purposes of the Policy as if she had registered the disputed domain names when she received the transfer of them.
The only explanation of what has happened is that the Respondents’ motive in registering the disputed domain names and accepting transfers of them seems to at least one of: disrupting the Complainant’s relationship with its customers or potential customers, attempting to attract Internet users for potential gain or persuading the Complainant to buy the disputed domain names from it for an amount in excess of the Respondent’s out-of-pocket expenses. The January 2011 exchange of e-mails supports the last suggestion. These all constitute evidence of registration and use in bad faith for the purposes of the Policy.
In the circumstances, it is unnecessary to deal with the Complainant’s other arguments in this case. The Panel concludes that both disputed domain names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <dolcegabbanaapparel.com>, <dolcegabbanaclothing.com> and <dolcegabbanaclothingstore.com> be transferred to the Complainant.
Dated: June 3, 2011