World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canali Ireland Ltd. v. Kanchai Tanurat

Case No. D2011-1469

1. The Parties

Complainant is Canali Ireland Ltd of Dublin, Ireland, represented by Giambrocono & C. S.p.A., Italy.

Respondent is Kanchai Tanurat of Chiangrai, Thailand.

2. The Domain Name and Registrar

The disputed domain name <canalicollection.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2011. On August 31, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2011, the Registrar 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 Respondent of the Complaint, and the proceedings commenced on September 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 12, 2011.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on November 3, 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 trademark upon which the Complaint is based is CANALI. Complainant is in the business of selling men’s fashion clothing.

According to the documentary evidence and contentions submitted, Complainant directly or indirectly owns a number of trademark registrations for the CANALI trademark around the world, including Community Trademark Registration No. 3414521, issued on February 22, 2005; Thailand Trademark Registration No. 93649, filed on May 12, 1989, and Thailand Trademark Registration No. 309389, filed on April 25, 2008. On November 14, 2011, the Panel checked the United States Patent and Trademark Office (USPTO) database available online and found that Complainant is the owner of the following United States Trademark Registrations for CANALI: No. 1185864, issued on January 12, 1982; No. 2258447, issued on July 6, 1999; No. 3425329, issued on May 13, 2008; No. 3462931, issued on July 8, 2008; No. 3774104 issued on April 13, 2010; No. 3849507, issued on September 21, 2010; and No. 3953467, issued on May 3, 2011. In addition, Complainant is the owner of a number of domain names containing the term “canali”.

The disputed domain name was registered with the Registrar on August 25, 2010. As the domain name registration expired on August 25, 2011, Complainant has secured the renewal of the disputed domain name until August 25, 2012.

5. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain name is confusingly similar to the CANALI trademark because (i) it incorporates the word “Canali,” which is identical to the company name and trademark CANALI owned by Complainant, and the common word “collection”, which in the fashion field refers to “a group of clothing designs put together to tell a story of the designer's inspiration and new trends for the fashion brand during a particular season” “http://www.ehow.com/facts_5847421_definition-collection-line-apparel-industry.html” and (ii) it is almost identical to the domain names owned by Complainant which incorporate the CANALI trademark.

Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has never been, and is not currently, commonly known by the disputed domain name, nor its name consists in whole or in part of the denomination “Canalicollection”, or its business is somehow connected with CANALI; (ii) Respondent does not hold any trademark or other right consisting in whole or in part of the denomination “Canali”, (iii) “Canali” is neither a common noun nor a common name if used in connection with “Collection”, and (iv) Respondent is not making a legitimate noncommercial or fair use of the domain name as the disputed domain name is currently used to provide advertising links that generate revenue due to the reputation of the CANALI trademark.

Finally, Complainant contends that the disputed domain name has been registered and is being used in bad faith by Respondent because: (i) CANALI has become a well-known mark, especially in the fashion field, and Complainant has not granted, assigned, licensed, sold or transferred any rights in its CANALI trademarks to Respondent; and (ii) Respondent is not using the domain name in connection with a bona fide offering of goods or services.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Effect of the Default

The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

B. Identical or Confusingly Similar

The disputed domain name incorporates the CANALI trademark in its entirety in association with the word “collection”. In this type of combination it is clear that the CANALI trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.

Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.

The addition of the generic term “collection” increases the likelihood of confusion because it refers to a type of product that is identified by the CANALI trademark and, therefore, does nothing to distinguish the disputed domain name from the registered trademark. Also, it has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark.

Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, supra.

Therefore, the Panel finds that the domain name <canalicollection.com> is confusingly similar to the CANALI trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.

C. Rights or Legitimate Interests

The disputed domain name is not the name of Respondent nor the name by which Respondent is commonly known, and the disputed domain name is not the Respondent’s trade name or trademark.

The Panel finds reasonable Complainant’s contention that CANALI is neither a common noun nor a common name when used in connection with the term “collection”, even though “canali” is an Italian word that translates into English as "canals" or "channels". CANALI has acquired sufficient distinctiveness as a registered trademark since originally launched in Italy in 1934 by the brothers Giovanni and Giacomo Canali “http://www.canali.it/english/homepage.php#/profile/history”. The Panel finds no reason why Respondent would choose the denomination “Canalicollection” other than to create an association with the CANALI trademark.

According to the documentary evidence and contentions submitted, the disputed domain name was used to provide advertising links to fashion products. The Panel concurs with prior WIPO UDRP decisions holding that there is no bona fide offering of goods or services where the disputed domain name resolves to a website with sponsored links including to competitive third-party websites. See ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649. As decided in Gene Kelly Image Trust v. BWI Domain Manager, WIPO Case No. D2008-0342, “[t]he existence of sponsored links on the website also clearly demonstrates that the Respondent is not using the disputed domain name as a legitimate non-commercial fan site. On the contrary, it appears plain that the Respondent is using the disputed domain name to make a commercial gain.”

On November 14, 2011, the Panel tried to visit the webpage to which the disputed domain name resolved, but that attempt was unsuccessful. The deactivation of Respondent’s website does not affect a finding that Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.

The Panel is convinced that Complainant has established a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name, and by defaulting Respondent has failed to provide the Panel with any evidence of Respondent’s rights to or legitimate interests therein. In addition, the Panel finds that none of the three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the disputed domain name (paragraph 4(c) of the Policy).

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

D. Registered and Used in Bad Faith

In view of the circumstances of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of the CANALI trademark when Respondent registered the disputed domain name. In fact, the combination of the “Canali” word, which is recognized as a well-known trademark in the fashion field with the word “collection”, which is commonly used in the fashion business, indicates that Respondent intended to take advantage of possible mistakes by Internet users when trying to reach a Complainant’s website. Therefore, Respondent showed opportunistic bad faith because the disputed domain name was connected with the activities identified by Complainant’s trademark.

The Panel also concurs with the understanding of several other WIPO UDRP panels that the use of a domain name to point to a website that offers sponsored links to other websites providing services or goods which are similar to those offered by Complainant’s own website is evidence of bad faith use, particularly if, as in the instant case, Complainant had registered and used similar domain names. Mudd, (USA) LLC v. Unasi, Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556.

Paragraph 4(c)(iv) of the Policy provides that if, by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 your web site or location or of a product or service on your web site or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith.

The Panel has found before, for the purpose of determining the existence of confusingly similarity, that the addition of the generic term “collection” increases the likelihood of confusion because it refers to a type of product that is identified by the CANALI trademark. The fact that Respondent’s website is now deactivated does not affect a finding of bad faith use of the disputed domain name.

Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith, and finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <canalicollection.com> be transferred to the Complainant.

Manoel J. Pereira dos Santos
Sole Panelist
Dated: November 15, 2011

 

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