WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Franklin & Marshall SRL v. PrivacyProtect.org Domain Name / Pantages
Case No. D2011-2043
1. The Parties
Complainant is Franklin & Marshall SRL of Montorio, Italy, represented by LegalBase, Sri Lanka.
Respondent is PrivacyProtect.org Domain Name of Queensland, Australia / Pantages of Caracas, Venezuela.
2. The Domain Name and Registrar
The disputed domain name <franklinmarshall.com> (the “Domain Name”) is registered with Power Brand Center Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2011. On November 18, 2011, November 22, 2011, and November 25, 2011 the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the Domain Name. On November 28, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 28, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 30, 2011. The Center verified that the Complaint together with the amendment to 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 December 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 22, 2011.
The Center appointed Thomas D. Halket as the sole panelist in this matter on January 4, 2012. 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 following is based upon Complainant’s submission which has not been disputed by Respondent. Complainant is an Italian company that creates and produces clothing and accessories bearing the FRANKLIN & MARSHALL marks. In addition to worldwide sales of its products, Complainant also operates stores in Rome, Verona, Milan, Toulouse, Tokyo, Osaka and Paris and is opening others in Dubai, Kuwait and Amsterdam. In 2010 its marketing expenditure was EUR 2,500,000 and its worldwide turnover was EUR 40,486,857.
Complainant has registered the FRANKLIN & MARSHALL mark in various countries around the world.
Respondent itself apparently does not manufacture or sell any products bearing any mark similar to FRANKLIN & MARSHALL. Rather, Respondent uses the Domain Name to operate a “click-through website” which contains numerous links to other websites which sell various apparel products similar to those sold by Complainant. This appears to be the only use Respondent makes of the Domain Name.
5. Parties’ Contentions
(a) The Domain Name is identical and confusingly similar to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) The Domain Name was registered and is being used by Respondent in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: “(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and, (ii) that 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
Since the Domain Name is virtually identical to the FRANKLIN & MARSHALL mark owned by Complainant, Complainant has met the first condition for relief. The omission of the “&” in the Domain Name is not a substantial enough difference to differentiate the Domain Name from the marks.
B. Rights or Legitimate Interests
Complainant alleges that Respondent has no connection or affiliation with Complainant, that it has not received from Complainant any license or consent, express or implied, to use the FRANKLIN & MARSHALL mark, and that there is no evidence to demonstrate that Respondent has ever been known by the Domain Name. As these facts are undisputed, the Panel accepts them.
The only use Respondent has made of the Domain Name or the FRANKLIN & MARSHALL mark appears to be the operation of the website under the Domain Name as a click-through website redirecting traffic to competitors of Complainant. This use does not establish a bona fide offering of goods or services or a legitimate interest. See, e.g., Barclays Bank PLC v. Rico Martinez, WIPO Case No. D2010-1987.
Complainant has thus also established that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you [Respondent] have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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.”
It is undisputed that Respondent uses the Domain Name to operate a click-through website redirecting traffic to competitors of Complainant. In substantial substance Respondent thus uses the Domain Name to “intentionally [attempt] to attract, for commercial gain, Internet users to [its] web …., by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service …” Paragraph 4(b)(iv). See Barclays Bank PLC, supra.
Complainant thus has established that Respondent has registered and is using the Domain Name in bad faith in violation of paragraph 4(a)(iii) 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 <franklinmarshall.com> be transferred to Complainant.
Thomas D. Halket
Dated: January 9, 2012