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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G&P Net S.p.A. v. Shawshank Trade

Case No. D2012-0153

1. The Parties

The Complainant is G&P Net S.p.A. of Altopascio, Lucca, Italy, represented by Società Italiana Brevetti, Italy.

The Respondent is Shawshank Trade of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <peutereysitoufficiale.net> is registered with Name.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2012. On January 27, 2012, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On January 27, 2012, Name.com LLC 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 the Respondent of the Complaint, and the proceedings commenced on February 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2012.

The Center appointed George R. F. Souter as the sole panelist in this matter on February 28, 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 Complainant is in the business of producing, marketing and selling high quality articles of clothing and accessories. It has used the trade mark PEUTEREY from 1997 to identify its products on the market and is the owner of numerous registered rights in the trade mark in respect of the appropriate goods, details of which have been supplied to the Panel, the earliest dating from 1995 and which cover a wide geographical area, including its home country, Italy, specifically, the European Union, China, Hong Kong and Macao. The Complainant’s products can be found in retail stores in 25 countries. Evidence has been provided by the Complainant which indicates that there are no third party registrations of trade marks internationally which are identical or similar to the trade mark PEUTEREY.

The disputed domain name was registered on August 23, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its trade mark is highly distinctive, and that the only difference between its trade mark PEUTEREY and the disputed domain name is the addition of the descriptive components “sito ufficiale”, which is Italian for “official site”. This Italian expression is sufficiently close to the English equivalent to be readily understood by English-speakers in international trading. Consequently, the Complainant alleges that the disputed domain name is confusingly similar to the trade mark in which it has rights.

The Complainant contends that it is not affiliated with the Respondent, has not licensed or otherwise authorized the Respondent to use its trade mark or to incorporate it into a domain name. Further, the Complainant contends that the Respondent is not commonly known by the domain name, does not trade under the mark PEUTEREY and does not make any legitimate commercial use thereof. Consequently, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant alleges that the disputed domain name has been registered and is being used in bad faith. The Complainant has provided evidence to the Panel to the effect that the disputed domain name is currently unused, although accessing the website to which the disputed domain name resolves can result in a potential customer being directed to websites relating to competing products.

The Complainant has drawn the Panel’s attention to the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and other similar decisions, in which the circumstances attending non-use of a domain name have been held to constitute use in bad faith of a domain name, and argues that the circumstances of the present case are such as to justify a finding of registration and use in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name of the Respondent be transferred to the Complainant or be cancelled:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark (“mark”) in which the Complainant 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

It is well-established in decisions under the UDRP that gTLD indicators (“.com”, “.info”, “.net”, “.org”) may not be taken into account in the consideration of confusing similarity between a trade mark and a domain name. It is also well-established in previous decisions under the UDRP that the mere addition of descriptive elements to a well-known or distinctive mark is not sufficient to evade a finding of confusing similarity. The Panel agrees with prior UDRP decisions as referred to above, both in connection with gTLD indicators and in connection with added descriptive elements.

The Complainant has already had its trade mark rights to its mark PEUTEREY recognized in previous decisions under the UDRP. The Panel recognizes the Complainant’s mark PEUTEREY as distinctive.

In the circumstances of the present case, the Panel finds that the Complainant’s mark and the disputed domain name are confusingly similar, and, accordingly finds that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Where a respondent has failed to demonstrate rights or legitimate interests in the disputed domain name, it is the predominant view of panels in previous UDRP decisions, with which this Panel agrees, that a prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.

In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is of the view that, in the case of a well-known or distinctive mark, the finding that the Respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel finds such circumstances in the present case, and, accordingly, finds that the disputed domain name was registered in bad faith.

The Panel agrees with the reasoning in Telstra Corporation Limited v. Nuclear Marshmallows, supra, feels that the circumstances of the present case are such as to justify a finding of use in bad faith, and so finds.

The Panel, accordingly, finds that the Complainant has satisfied the test of paragraph 4(a)(iii) of the Policy.

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 <peutereysitoufficiale.net> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Dated: March 13, 2012

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