WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dolce & Gabbana s.r.l. v. DOT.ITALIA c/o Dynadot Privacy
Case No. D2012-1961
1. The Parties
The Complainant is Dolce & Gabbana s.r.l., of Milan, Italy, represented by Studio Turini, Italy.
The Respondent is DOT.ITALIA c/o Dynadot Privacy of San Mateo, California, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <dolce-gabbana.com> is registered with Dynadot, LLC (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 Disputed Domain Name. On October 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 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 8, 2012.
The Center appointed Mr. Nicholas Weston as the sole panelist in this matter on November 20, 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 operates a fashion business with sales in more than 40 countries in the year 2010, totaling around Euro 1,120 million. The Complainant holds registrations for the trademark DOLCE & GABBANA in numerous countries, including several international registrations, which it uses to designate fashion apparel, jewellery and cosmetic products. Registration has been in effect in Italy since 1985.
The Complainant is also the owner of, inter alia, the domain name <dolcegabbana.com>, since 2001 (see Dolce & Gabbana s.p.a. v. Victory, WIPO Case No. D2001-1174), which resolves to a website about the DOLCE & GABBANA fashion business.
The Disputed Domain Name <dolce-gabbana.com> was first registered on December 26, 2003.
5. Parties’ Contentions
The Complainant cites its trademark registrations of the trademark DOLCE & GABBANA in various countries as prima facie evidence of ownership.
The Complainant submits that the mark DOLCE & GABBANA is distinctive and that its rights in that mark predate the registration of the Disputed Domain Name <dolce-gabbana.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the DOLCE & GABBANA trademark and that the similarity is not removed by the addition of the hyphen (citing Dolce & Gabbana s.r.l. v. Hu Weijie, WIPO Case No. D2012-0697; AT&T Knowledge Venture II, L.P. v. Rnetworld, WIPO Case No. D2007-0035; AT&T Corp. v. ATandT.net, WIPO Case No. D2005-1006; AT&T Corp. v. Sure Source, WIPO Case No. D2002-1179).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in, or license to use, the DOLCE & GABBANA mark.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that,
“we can hardly believe that the Respondent was not aware of the existence of the Complainant’s trademarks and reputation before registering the disputes domain names…it would have only needed to type the word(s) “dolce gabbana”, on a search engine to realize that it is a world famous trademark, owned by the Complainant.”
On the issue of use, the Complainant contends that the Respondent is an opportunist that has made a bad faith offer to sell the Disputed Domain Name for a sum exceeding its reasonable direct costs, and secondly that the Respondent uses the Disputed Domain Name for pay-per-click (“PPC”) landing pages; a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements and that it may also be selling related products in competition with genuine DOLCE & GABBANA brand fashion goods. In this case, when the Disputed Domain Name <dolce-gabbana.com> is typed in, it redirects traffic to a PPC landing page where the Respondent’s website provides links to offerings in a number of categories including fashion related goods.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(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.
A. Identification of Respondent or Respondents
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant has named and proceeded against DOT.ITALIA c/o Dynadot Privacy of San Mateo, California, United States of America (U.S.).
Under paragraph 3(b)(v) of the Rules, the Complainant is required, inter alia, to provide the name of the Respondent and contact information. The ICANN Registrar Accreditation Agreement (2009) at paragraph 18.104.22.168 requires that “The Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them...” In other words, the registrant and the registrar are required to keep in contact. Having regard also to the commercial benefit derived by the privacy service and onerous obligations incumbent on a complainant, this Panel finds it is procedurally efficient, and equitable, to permit joinder of the privacy service named as the Respondent (and as reflected in the publicly-available WhoIs).
Finally, while the Center must attempt reasonably to contact the Respondent, it can do no better than to send communications to the contact information on official record and provided in the Complaint (and provided by the Registrar in its Registrar Verification Response). Proof of service is not required. Paragraph 2 of the Rules uses the words “calculated to achieve actual notice”, not “actually achieve actual notice”. As no formal Response was filed, the Panel has reviewed the record to ensure that the Complaint was properly notified to the Respondent. The Panel is satisfied that the Center has discharged this responsibility.
B. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark DOLCE & GABBANA in Italy and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark DOLCE & GABBANA in Italy pursuant to Trademark No. 372387 registered on July 26, 1985 (now numbered 1134881) and internationally pursuant to International Registration No. R555568 registered on February 14, 1990 and owns a number of other registrations. In any event, the propriety of a domain name registration under the Policy may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark DOLCE & GABBANA.
The Panel also finds that the mark DOLCE & GABBANA is well-known: see Dolce & Gabbana S.r.l. v. Domains by Proxy, Inc / Renee Carr, WIPO Case No. D2011-0597; Dolce & Gabbana S.r.l. v. Agnes Varga, WIPO Case No. D2004-0482; Dolce & Gabbana s.p.a. v. Victory, WIPO Case No. D2001-1174.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the DOLCE & GABBANA trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the word elements of Complainant’s trademark DOLCE & GABBANA; (b) hyphenated; and (c) followed by the top level domain suffix “.com” all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name may be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “dolce-gabbana”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it can be confusingly similar to that mark despite hyphenation of the words comprising the trademark (see EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038; InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075; NFL Properties, Inc. v. Rusty Rahe, WIPO Case No. D2000-0128; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131; EasyJet Airline Company Ltd v. M. Tim Holt, WIPO Case No. D2000-0465; Dr. Sally Jensen v. Dissertationdoctors.com and Dissertation-doctors.com, WIPO Case No. D2003-0348; Sony Ericsson Mobile Communications International AB, Sony Corporation, Telefonaktiebolaget LM Ericsson v. Dariusz Pietras, WIPO Case No. D2005-0553). This Panel agrees with numerous other UDRP panels such as these which held that the addition of hyphenation is not sufficient to avoid confusion.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel found that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”.
The Panel finds that the Disputed Domain Name is therefore confusingly similar to the DOLCE & GABBANA trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the DOLCE & GABBANA mark. In fact, the issue is not whether the Respondent has any rights or legitimate interests in the trademark DOLCE & GABBANA. Rather, the issue is whether the Respondent has any rights or legitimate interests in the Disputed Domain Name, for example by making the bona fide offering of a product or service called “dolce-gabbana”.
The Complainant provided evidence in the form of a screen capture that the Disputed Domain Name diverts traffic to a PPC website with links to a number of products and services of various categories. The evidence is that typing in the Disputed Domain Name misleadingly directs Internet users to a search engine composed of sponsored links in connection with the Complainant’s mark and thereby attempts illegitimately to trade for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark DOLCE & GABBANA. In Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085 the panel found that using the domain name to mislead users by diverting them to a search engine “does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate.”
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words (see National Trust for Historic Preservation v. Barry Preston, supra; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; and WIPO Overview 2.0, paragraph 2.2). The exception does not apply in this case as the words “dolce” and “gabbana”, whether taken separately or together, are highly distinctive and bear no obvious descriptive qualities.
The evidence is that at the time of, or before the filing of the Complaint, the Disputed Domain Name diverted traffic to a PPC website containing links to other online pages selling products in product categories that may be related to the Complainant’s DOLCE & GABBANA products. In Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313, the panel found that as “the Respondent is making a non legitimate commercial use of the disputed domain names that misleadingly diverts consumers” citing G.D Searle & Co. v. Fred Pelham, NAF Claim No. 117911 “…because the Respondent was using the infringing domain name to sell [related products to those of the Complainant] it could be inferred that the Respondent was opportunistically using Complainant’s mark in order to attract Internet users to its website.”
On any objective view, the Panel finds the Respondent here is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the test set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its PPC web page.
The Panel finds for the Complainant on the second element of the Policy.
D. Registered and Used in Bad Faith
The third element of the Policy is that the Complainant must also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both:
“b. Evidence of Registration and Use in Bad Faith. 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, (relevantly):
i. circumstances indicating that you 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.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The lack of any good faith attempt to ascertain whether or not a respondent was registering and using someone else’s trademark, may support a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The Panel finds the trademark DOLCE & GABBANA is so well-known globally for fashion goods that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it. Registration in these circumstances has been held to amount to bad faith registration under the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant held direct Italian registration for the trademark DOLCE & GABBANA, Italian Registration No. 372387 (now numbered 1134881) from 1985 predating the registration of the Disputed Domain Name by some 18 years.
A further conclusion can be drawn about the Respondent from its use of the Disputed Domain Name resolving to a web page containing links and advertisements that directly compete with the offerings to be found on the website operated by the Complainant. In this Panel’s view, it is in breach of the “Dynadot Service Agreement” for breach of the required acknowledgment (at paragraph 9(iii)): “neither Your registration, application, and/or transaction request, nor use of any of Dynadot’s services, nor the manner in which You intend to use Dynadot’s services will directly or indirectly infringe the legal rights of a third party.”
The Respondent’s use of the Disputed Domain Name is apparently for domain monetization unconnected with any bona fide supply of goods or services by the Respondent. The business model in this case is two-fold.
First, there is evidence that the Respondent has offered the Disputed Domain Name for sale at prices well in excess of out-of-pocket costs, the maximum amount sought having been the sum of USD 10,000 and as soliciting an offer recently as May 2, 2012. This Panel therefore finds that, having registered the Disputed Domain Name at least some 18 years after the date on which the Complainant registered its original trademark, the Respondent registered the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant. As a result, the Panel makes a finding of bad faith as against the Respondent under paragraph 4(b)(i) of the Policy.
Second, the business model also involves the Respondent in passively collecting click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s DOLCE & GABBANA fashion business. Exploitation of the reputation of a trademark to obtain click-through revenues from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
This Panel finds that the Respondent has taken the Complainant’s trademark DOLCE & GABBANA and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 <dolce-gabbana.com> be transferred to the Complainant.
Date: December 3, 2012