WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Levitas S.p.A. v. Mackenzie Nelson
Case No. D2012-0762
1. The Parties
The Complainant is Levitas S.p.A. of Montegranaro, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Mackenzie Nelson of Temecula, California, of United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <bikkembergsnegozi.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2012. On April 13, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 13, 2012, eNom 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 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2012.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on May 15, 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, Levitas S.p.A., is the owner or assignee of the BIKKEMBERGS trademark, a fashion brand that is famous for its high quality clothing and shoe-ware.
The Bikkembergs brand was founded in 1986 by the Belgian designer Dirk Bikkembergs, and is named after him. Since its establishment, the Bikkembergs brand has been marketed and promoted worldwide by the Complainant and various predecessor companies.
The Complainant and its predecessors have filed and registered the marks DIRK BIKKEMBERGS and BIKKEMBERGS in multiple territories. Thus, the Complainant is currently the owner of various trademark registrations for the marks DIRK BIKKEMBERGS and BIKKEMBERGS around the world For example:
- International Registration No. 519819 for DIRK BIKKEMBERGS registered on December 30, 1987, designating Switzerland, Germany, France, Italy, Norway and Russian Federation;
- Community Trademark Registration No. 629386 for the DIRK BIKKEMBERGS logo, registered on October 11, 1999;
- Community Trademark Registration No. 3474046 for DIRK BIKKEMBERGS, registered on April 27, 2005;
- International Registration No. 875256 for DIRK BIKKEMBERGS, registered on January 6, 2006, designating Albania, Australia, Bosnia and Herzegovina, Bulgaria, Bahrain, Belarus, Switzerland, China, Egypt, Croatia, Republic of Korea, Kazakhstan, Morocco, Montenegro, Norway, Romania, Serbia, Russia Federation, Singapore, Syria, Turkey, Ukraine, United States of America and Viet Nam;
- Community Trademark Registration No. 5509823 for BIKKEMBERGS and logo, registered on November 9, 2007;
- International Registration No. 986556 for the BIKKEMBERGS logo, registered on October 28, 2008, designating Bahrain, Oman and Syrian Arab Republic.
The Complainant and its predecessor companies expended significant resources throughout the years in promotion and advertisement throughout the world. As a result of extensive use and publicity, the trademark BIKKEMBERGS is solely associated with the Complainant. Furthermore, the BIKKEMBERGS trademark has become well-recognized by the general public, and has generated significant goodwill.
The Complainant and its predecessor companies have also developed widespread presence on the Internet and are the owners of several domain names that contain the mark BIKKEMBERGS, including <bikkembergs.com> and others. The Complainant is using these domain names in connection with its activities.
The Complainant has been involved in many other UDRP proceedings in respect the term “Bikkembergs”.
The disputed domain name was created on March 1, 2012 and is operating for an online shop for purported Bikkembergs products.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the BIKKERMBERGS marks. The addition of the suffix “negozi” to the Complainant´s trademark does not create a new sign to distinguish the disputed domain name from the Complainant’s trademark since such word is deprived of any distinctive character and is considered to be generic and descriptive.
The Respondent has no rights or legitimate interests in the disputed domain name. Thus, the Respondent does not own any trademark for the disputed domain name or for other BIKKERMBERGS formative marks. The Complainant also alleges that the Respondent has not been authorized, licensed or given consent in any form. Moreover, the Respondent is not commonly known by the disputed domain name and does not make a legitimate noncommercial use since the website operated is aimed at disrupting, for commercial gain, the Complainant’s business.
In respect to the third element, the Complainant asserts that the disputed domain name was registered in bad faith because the Respondent’s website reproduces its trademarks with no authorization or approval, offers for sale purported BIKKERMBERGS products which are deemed to be fake because of the price and reproduces other distinctive signs and images associated with the Complainant’s trademark. Thus, the Complainant asserts that the Respondent must have been aware of the Complainant’s rights when registering the disputed domain name in an attempt to attract consumers for commercial gain, taking unfair advantage of the reputation of the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for a panel to decide to grant the remedy of transfer of a domain name to a complainant under the Policy it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under Paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed with a decision on the complaint”, whilst under Paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
Thus where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; State of Wisconsin v. Pro-Life Domain, Inc., WIPO Case No. D2003-0432; La Caixa D’Estalvis I Pensions de Barcelona v. José Antonio Bernal Case No. D2006-1637). Here, the Respondent has defaulted, and it is appropriate in the present case for the Panel to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Here, there two key elements for the Complainant to succeed in the first requirement: The Complainant has shown evidence of a registered trademark and the disputed domain name integrates the Complainant’s BIKKEMBERGS trademark in its entirety.
On the other hand, previous UDRP panels have decided that the addition of a generic or descriptive term to an otherwise distinctive trademark name is to be considered confusingly similar to the trademark (Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809 (finding that the addition of the words “buy” and “online” does not remove a domain name from being confusingly similar); F. Hoffman La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049 (finding that the words “buy” and “online” are not sufficient to render a domain name dissimilar or to prevent consumer confusion
In this case, this Panel is satisfied that the addition of the word “negozi” (meaning “shops” in Italian) to the Complainant’s trademark in the disputed domain name does not avoid a finding of confusing similarity under the first element.
The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Having the Complainant established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name in accordance with Policy, paragraph 4(a)(ii).
The Complainant has shown evidence that the Respondent does not own any BIKKEMBERGS trademark, neither has been authorized or has been licensed to use the Complainant’s trademarks, nor has been commonly known by the disputed domain name.
On the other hand, the Respondent did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Panel, according to paragraph 5(e) of the Rules, finds that the Respondent did not rebut the Complainant’s prima facie case.
The Panel, accordingly, concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established this element of its case.
C. Registered and Used in Bad Faith
The Complainant has shown evidence enough to qualify the mark BIKKEMBERGS as well-known (in this respect, see Levitas S.p.A. v. ddsidake, sidake, WIPO Case No. D2011-2315: “Furthermore, the BIKKEMBERGS trademark has become well-recognized by the general public, and has generated significant goodwill”).
Thus, the Complainant asserts that the disputed domain name was registered and used by the Respondent in order to attract Internet users to the Respondent’s site, by exploiting the Complainant’s trademarks.
As previous UDRP panels have declared: “The registration of a domain name incorporating a famous mark by a party that has no legitimate connection with the mark or relationship with the owner of the mark, generally constitutes bad faith registration and this is the approach of the Panel in this case” (Swarovski Aktiengesellschaft v. shenglin fan, WIPO Case No. D2012-0170). And this seems to be the case to the Panel.
In respect to the use of the disputed domain name, the Panel is prepared to admit the use in bad faith according to paragraph 4(b)(iv) of the Policy: the Respondent has registered the domain name in an attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark.
The Complainant has clearly proved, by means of the printouts of the website to which the disputed domain name resolves, that the Respondent is using the disputed domain name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement and such practice is to be precluded.
Upon the above mentioned, the Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.
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 <bikkembergsnegozi.com> be transferred to the Complainant.
Dated: May 22, 2012