WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dolce & Gabbana s.r.l. v. Zhifang Huang
Case No. D2012-0699
1. The Parties
The Complainant is Dolce & Gabbana s.r.l. of Milan, Italy, represented by Studio Legale Turini, Italy.
The Respondent is Zhifang Huang of Fuzhou, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <dolcegabbanastores.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2012. On April 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2012, 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 the Respondent of the Complaint, and the proceedings commenced on April 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2012.
The Center appointed Isabelle Leroux as the sole panelist in this matter on May 9, 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 the internationally known fashion company named after its founders, the stylists Dominique Dolce and Stefano Gabbana.
The Complainant is the exclusive worldwide licensee of several trademarks for DOLCE & GABBANA, such as:
- International trademark registration number 625152, registered on July 13, 1994, covering products of classes 03, 09, 14, 18 and 25 and designating Italy, Andorra, Kazakhstan, Egypt, Germany, Uzbekistan, Azerbaijan, Belarus, Czech Republic, Croatia, Hungary, Kenya, Romania, Liechtenstein, Latvia, Morocco, Poland, Romania, Russian Federation, Slovenia, Slovakia, Syria, Ukraine, Vietnam;
- International trademark registration number 666432, registered on April 24, 1996, covering products of classes 20, 21, 22 and 24 and designating Italy, Albania, Armenia, Austria, Bosnia and Herzegovina, Bulgaria, Benelux, Switzerland, China, Cuba, Spain, France, Kyrgyzstan, Kazakhstan, Democratic People’s Republic of Korea, Egypt, Germany, Uzbekistan, Azerbaijan, Belarus, Czech Republic, Croatia, Hungary, Kenya, Romania, Liechtenstein, Liberia, Latvia, Morocco, Monaco, Republic of Moldova, Montenegro, Former Yugoslav Republic of Macedonia, Mongolia, Poland, Portugal, Romania, Russian Federation, Serbia, Slovenia, Slovakia, Sudan, Syria, Tajikistan, Ukraine, Vietnam;
- Community trademark registration number 454066, filed on September 10, 1996, covering products of classes 03, 09, 18 and 25.
- Community trademark registration number 1842079, filed on September 6, 2000, covering services of class 38.
“Dolce & Gabbana” is also the Complainant’s company name, and the Complainant is the owner of the domain name <dolcegabbana.com>.
The Respondent is based in the People’s Republic of China. The Respondent registered the disputed domain name <dolcegabbanastores.com> on May 8, 2011.
5. Parties’ Contentions
The Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain name. In particular, the Complainant submits that the Respondent was not authorized, licensed or otherwise allowed to use the name “dolcegabbana”, and that this is evidenced by the fact that the Complainant is the exclusive licensee of the DOLCE & GABBANA trademarks.
The Complainant also submits that the Respondent registered the disputed domain name in bad faith, as the trademark DOLCE & GABBANA is a worldwide famous trademark, which means that the Respondent knew, or should have known about the Complainant and its rights.
The fact that the Respondent refused to voluntarily transfer the disputed domain name is another factor that the Complainant regards as evidence of the Respondent’s bad faith.
In addition, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bone fide offering of goods or services, which resolves to a parking page showing sponsored links for products and services in direct competition with the Complainant’s products and services, the Respondent thus creating a diversion of potential customers of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that the disputed domain name be transferred:
(i) that the disputed 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Procedural Matters
Paragraph 18 of the Rules provides that in the event of legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
In the present case, the Registrar notified the Center that the disputed domain name was locked pending a court case filed in the United States of America (US) District Court of the Southern District of New York.
The Center informed the Complainant of such pending court case, and the Complainant’s authorized representative indicated that the Complainant is not part of any legal proceeding regarding the disputed domain name.
In light of these circumstances, as the Complainant is not part of the proceeding before the US District Court of the Southern District of New York, whereas the Complainant is the exclusive licensee of numerous DOLCE & GABBANA trademarks, the Panel has decided to proceed to a decision.
B. Identical or Confusingly Similar
The Complainant contends that it is an exclusive worldwide licensee of, and therefore has rights in, the DOLCE & GABBANA trademarks.
In particular, the Complainant asserts that it is entitled to act in order to recover and register, in its name, Internet domain names, which is evidenced by the trademark owner’s affidavit provided by the Complainant.
As to whether the disputed domain name is identical or confusingly similar to the DOLCE & GABBANA trademark, the relevant comparison to be made is with the second-level part of the disputed domain name only “dolcegabbanastores”, as it is well-established that the generic Top Level Domain suffix (i.e. “.com”) should be disregarded for this purpose.
The disputed domain name comprises the DOLCE & GABBANA trademark, and only differs from the Complainant’s trademark by the deletion of the sign “&” and addition of the generic English word “stores”. The Panel finds that these do not eliminate the confusing similarity between the Complainant’s registered trademarks for DOLCE & GABBANA and the disputed domain name <dolcegabbanastores.com>.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.
The addition of the descriptive term “store” as a suffix to Complainant’s trademarks does not dismiss the likelihood of confusion but on the contrary, as mentioned by the Complainant, it may increase it. Indeed, one common meaning of the term “store” is an establishment where merchandise is sold, usually on a retail basis. Internet users who visit the website at <dolcegabbanastores.com> are likely to be confused and may falsely believe that the website at <dolcegabbanastores.com> is operated by the Complainant for selling Dolce & Gabbana-branded products. Therefore, the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
C. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is the exclusive worldwide licensee of the famous DOLCE & GABBANA trademarks and there is no relationship between the Complainant and the Respondent giving rise to any license, permission or authorization of use of the disputed domain name.
The Panel therefore finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant persuasively argues that the Respondent has registered and used the disputed domain name <dolcegabbanastores.com> in bad faith.
The Panel is persuaded that the Respondent knew the Complainant’s trademarks, which are famous worldwide, when the Respondent registered the disputed domain name.
For the Panel, the fact that the official website of the Complainant is “www.dolcegabbana.com/store”, whereas the disputed domain name registered by the Respondent is <dolcegabbanastores.com>, as well as the deletion of the “&” of the trademark, evidences that the Respondent knew or should have known the Complainant’s rights at the time of registration and thus registered the disputed domain name in bad faith (see Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574).
With respect to paragraph 4(b)(iv) of the Policy, the Respondent uses the disputed domain name <dolcegabbanastores.com> as a portal site offering links to third party commercial sites. This use of a confusingly similar domain name and the resulting confusion will inevitably give rise to diversion of Internet users to the Respondent’s parked page proposing links to third party commercial websites. The Panel infers that the Respondent takes advantage of the Complainant’s popularity by redirecting Internet users looking for the Complainant, and benefits from this confusion and diversion by receiving “click-through” commissions in accordance with conventional practices on the Internet when Internet users reach a site through a link on the Respondent’s portal site (see Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231).
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith and that the Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.
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 name <dolcegabbanastores.com> be transferred to the Complainant.
Dated: May 23, 2012