WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
G&P Net S.p.A. v. Kenn Lee
Case No. D2011-0598
1. The Parties
The Complainant is G&P Net S.p.A. of Altopascio, Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is Kenn Lee of Shanghai, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <peutereyshop.com> (the “Domain Name”) is 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 Domain Name. On the same date, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information in the Complaint.
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 April 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2011.
The Center appointed Andrew Brown QC as the sole panelist in this matter on May 5, 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 in the business of producing, marketing and selling high quality articles of clothing and accessories. It has used the trademark PEUTEREY from 1997 to identify its products on the market and is the owner of numerous registered rights in the trademark (set out below) dating from 1995, 2000, 2004 and then 2007-2009. The Complainant’s products can be found in retail stores in 25 countries. Evidence provided by the Complainant indicates that there are no third party registrations of trademarks internationally which are identical or similar to the trademark PEUTEREY.
The Respondent registered the Domain Name on December 18, 2010. As on May 17, 2011 the Domain Name resolves to an error page containing the text “Powered by Zencart the art of e-commerce” and “Sorry! There seems to be a problem connecting to our database. Please give us a few minutes to remedy the problem. Thank you.”
The Complainant has adduced evidence that as on March 24, 2011 the Domain Name hosted an online retail operation offering to sell PEUTEREY branded apparel. The Complainant asserts that to the best of its knowledge, the goods offered for sale were counterfeit.
On March 8, 2011, the Center issued a decision regarding the same Complainant with respect to a different disputed domain name <peutereys.com>. See G&P Net S.p.A. v. Kenn Lee, WIPO Case No. D2011-0122. The Respondent in that case was also a Mr. Kenn Lee of the People’s Republic of China. It seems likely that the Respondent in that case is the same person as the Respondent in the present case.
5. Parties’ Contentions
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and is entitled to have the Domain Name transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the Domain Name in order to succeed in this proceeding:
(i) that the Domain Name 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 in bad faith.
A. Identical or Confusingly Similar
It is clear that the Complainant has extensive international rights in the trademark PEUTEREY. The Complainant is the proprietor of the following registered trademarks in class 25:
- Italian trademark registration No. 1155498 PEUTEREY.
- Community trademark registration No. 1736818 PEUTEREY.
- International registration No. 646277 PEUTEREY designating Austria, Benelux, Switzerland, Germany, Spain, France, Armenia, Australia, Azerbaijan, Belarus, China, European Union, Georgia, Kazakhstan, Kyrgyzstan, Norway, Romania, the Russian federation, San Marino, the Republic of South Korea, Tajikistan, Turkey, Turkmenistan, Ukraine, United States of America and Uzbekistan.
- Hong Kong, SAR of China, registration No. 300342774 PEUTEREY (figurative).
In addition, the Complainant has allowed its sister company, Geo Spirit S.p.A. to register and own the domain name <peuterey.it> and at that domain name to host a website promoting PEUTEREY branded products.
The Complainant asserts that the Domain Name is confusingly similar to the Complainant’s PEUTEREY trademark.
The Panel considers that the PEUTEREY mark is clearly recognizable within the Domain Name, and that the descriptive element “shop” does not sufficiently differentiate the Domain Name from the Complainant’s trademark so that confusion and deception seems inevitable.
The Panel finds that the Domain Name is similar to a trademark in which the Complainant has rights and therefore finds that Policy paragraph 4(a)(i) is satisfied in favour of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the Domain Name lies with the Complainant.
However the Complainant is required only to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once a prima facie case is made out, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the Domain Name.
The Complainant states that the Respondent is not affiliated with it in any way. Further it asserts that the Respondent does not own any Chinese trademark applications or registrations for PEUTEREY or any similar marks.
Finally the Complainant produced a “Saegis” search of the Respondent as Kenn Lee or Lee Kenn showing no results identifying the Respondent with the PEUTEREY mark.
In the present circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that Policy paragraph 4(a)(ii) is satisfied in favour of the Complainant.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel is satisfied that the Domain Name was registered and used in bad faith. The Complainant provided screenshots of the website hosted at the Domain Name on March 24, 2011 showing an online retail operation offering to sell PEUTEREY branded mens and womens garments. An online shopping cart enabled purchasers to make purchases online. It is clear from this that the Respondent registered the Domain Name and intentionally sought to attract Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark. Internet users would believe that the website was provided by the Complainant or licensed by it. In particular, the header of the Respondent’s website stated in Italian “Peuterey sito ufficiale.” The website was not the official site of the Complainant and the Respondent is not affiliated with the Complainant in any way. Further, the Complainant asserts that to the best of its knowledge the garments offered for sale were counterfeit. These facts are sufficient to make out element 4(b)(iv).
The Panel is accordingly satisfied that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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 <peutereyshop.com> be transferred to the Complainant.
Andrew Brown QC
Dated: May 17, 2011