WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dolce & Gabbana s.r.l. v. d and g online co tdd and g online co td
Case No. D2012-1956
1. The Parties
The Complainant is Dolce & Gabbana s.r.l. of Milano, Italy, represented by Studio Turini, Italy.
The Respondent is d and g online co tdd and g online co td of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <dolceandgabbana.org> (the “Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2012. On October 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 9, 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.
On October 10, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On October 10, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit its comments.
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 October 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2012.
The Center appointed Karen Fong as the sole panelist in this matter on November 21, 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 exclusive licensee of the trade mark DOLCE & GABBANA which is a famous Italian high fashion brand founded in the 1980s. “Dolce” and “Gabbana” are the last names of the two designers Domenico Dolce and Stefano Gabbana, the founders of the Dolce & Gabbana fashion house.
The DOLCE & GABBANA trade mark is registered all of over the world including China. The earliest of the registrations for the DOLCE & GABBANA trade mark dates back to 1985.
The Complainant’s official website is connected to the domain name <dolcegabbana.com>. The website also features an online store.
The Domain Name was registered on December 13, 2011. At the time of the filing of the Complaint, the website connected to the Domain Name was offering for sale counterfeit Dolce & Gabbana products. The Domain Name now redirects to the website www.burberrybags-outlet.us.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the DOLCE & GABBANA trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in its letter to WIPO dated October 10, 2012, that the language of the proceeding should be English as the Respondent is familiar with the English language. The Complainant contends amongst other things that the website connected to the Domain Name was in English in its entirety. Further as the Complainant is an Italian company, conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having this Complaint translated into Chinese.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the mark DOLCE & GABBANA through use and registration that predates the registration of the Domain Name.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark DOLCE & GABBANA is the dominant portion of the Domain Name. The substitution of the word “and” for the ampersand does not in any way negate the confusing similarity encouraged by the Respondent’s integration of the Complainant’s trade mark as the term “and” bears the same meaning as the ampersand which is not registrable as part of a domain name string. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the “.com” generic domain suffix.
The Panel finds that the Domain Name is confusingly similar to the DOLCE & GABBANA trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
The Complainant contends that the Respondent has not been licensed or authorized by the Complainant to use the DOLCE & GABBANA name/mark. Whilst the Respondent appears to be a company with a name which incorporates another trade mark of the Complainant (D&G), the registrant details on the WhoIs search do not appear to be accurate as the Hong Kong address consists only of numerals with no street name. Further, the goods sold by the Respondent on the website connected to the Domain Name are counterfeit. A statement from the trade mark owner provides the reasons why they have been identified as counterfeit. There can be no legitimate interest in the sale of counterfeits.
The Respondent has defaulted and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. Further, paragraph 14 of the Rules provides that the Panel may draw such inferences from such a default as it considers appropriate.
Accordingly, the Panel infers from the Respondent’s silence that the Complainant’s allegations are, in fact, correct. As such, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant’s famous trade mark when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the DOLCE & GABBANA trade mark registration.
The very incorporation of the Complainant’s trade mark in the Domain Name and the display of the Complainant’s trade mark and counterfeit products on the website connected to the Domain Name (the “Website”) confirm the Respondent’s awareness of the trade mark. Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. The products offered for sale on the Website are counterfeit Dolce & Gabbana products for reasons set out in paragraph 6D. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 and Prada SA v. Domains for Life, WIPO Case No. D2004-1019).
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of or authorised or endorsed by the Complainant. The fact that the Domain Name now re-directs to a website which is connected to a domain name which includes another famous trade mark, BURBERRY and purports to sell BURBERRY branded goods is evidence of the fact that as part of the Respondent is both a cybersquatter as well as a counterfeiter.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name <dolceandgabbana.org> be transferred to the Complainant.
Dated: December 5, 2012