WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Miroglio S.p.A. v. Mr. Alexander Albert W. Gore
Case No. D2003-0557
1. The Parties
The Complainant is Miroglio S.p.A., a company incorporated under the laws of Italy, having its principal place of business in Cuneo, Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Mr. Alexander Albert W. Gore, an individual resident in Lviv Rudno, Ukraine.
2. The Domain Name and Registrar
The domain name at issue is <elenamiro.net>, which is registered with eNom.
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on July 16, 2003, and in hardcopy on July 18, 2003. An Acknowledgement of Receipt was sent by the Center to the Complainant, dated July 16, 2003.
On July 16, 2003, a Request for Registrar Verification was transmitted to the Registrar, which failed to submit a Verification Response. Therefore, the Center made a Whois printout on July 29, 2003, which showed that the disputed domain name was registered with eNom, and that the Respondent, Alexander Albert W. Gore, was the current registrant of the disputed domain name. The Panelist would like to remind the Registrar of the importance of providing a Verification Response so that the Center can ascertain the contact information of the Respondent and provide appropriate notice and furthermore to ensure that the domain name registration remains locked during the UDRP proceedings.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999, (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
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 July 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 19, 2003.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on August 26, 2003. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. 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. The Administrative Panel shall issue its decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules.
4. Factual Background
The Complainant and its Registered Trademarks
The Complainant is the owner of several registrations throughout the world for the trademark "ELENA MIRO," which cover mostly, but not exclusively, the goods "clothing" in international class 25 (see Annex 1 to the Complaint). The earliest applications were filed on July 19, 1984.
The domain name <elenamiro.net> was registered by the Respondent on May 7, 2003.
5. Partiesí Contentions
(1) The Domain Name is Identical or Confusingly Similar to a Trademark in which Complainant has Rights
The Complainant is an internationally well-known company in the field of fashion, and the owner of several trademarks for "ELENA MIRO" throughout the world (see Annex 1 to the Complaint). They cover mostly, but not exclusively, clothing. In order to limit the number of enclosures, copies of representative trademarks are enclosed herewith:
- Italian registration "ELENA MIRO" No. 801915 (see Annex 2 to the Complaint);
- International registration "ELENA MIRO" No. 488509 (see Annex 3 to the Complaint).
It is believed by the Complainant that it cannot be seriously disputed that Complainant is and has been the owner of the trademark "ELENA MIRO" for several years, and that "ELENA MIRO" is an internationally well-known trademark, as even a cursory look at the web by performing a search for "ELENA MIRO" (or "ELENA MIRO") would show.
The domain name <elenamiro.net> is confusingly similar with the trademark "ELENA MIRO"; in fact, it is nearly identical.
(2) Respondent has No Rights or Legitimate Interests in the <elenamiro.net> Domain Name
Upon information and belief, Respondent has no rights or legitimate interests in respect of the domain name. In particular (i) there is no evidence of the Respondentís use of, or demonstrable preparations to, use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The only thing Respondent offers through its domain name is a link to a pornographic website; (ii) Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name "ELENA MIRO"; (iii) Respondent links to the default page of a website, which can be further navigated only by paying a fee. Hence, its use is commercial, and any possibility of a non-commercial fair use is excluded.
(3) Respondent Registered and is Using the <elenamiro.net> Domain in Bad Faith
According to the Complainant there is no way that Respondent may not have been aware of the trademark "ELENA MIRO" of the Complainant, and registration may only have occurred in bad faith. When it may be presumed that "the Respondent (Ö) knew of the renown of the Complainantís trademarks," a finding of "opportunistic bad faith" is in order (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157: here, the Panel found that Respondent, as "an Italian citizen" could not have ignored that "BANCA SELLA" is a famous trademark in Italy for banking services).
In Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163, the Panel noted that "<veuvecliquot.org> is so obviously connected with such a well-known product [VEUVE CLIQUOT champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith."
In Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, it was also suggested that "the domain names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith [quoting Veuve Cliquot]. In the absence of contrary evidence, the Panel finds that Respondents knew of or should have known of the Complainantís trademark and services at the time Respondents registered the domain names given the widespread use and fame of the Complainantís "CHRISTIAN DIOR" mark."
Even in a case where the trademark involved (EXPEDIA for online travel services) was somewhat less famous than "VEUVE CLIQUOT" or "CHRISTIAN DIOR," it was decided that "the Respondent knew of or should have known of the Complainantís trademark and services at the time it registered the domain name <xpediatravel.com>, given the widespread use of the Complainantís EXPEDIA website" (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).
Additionally, that Respondent operates in bad faith is evidenced by his registration of several other domain names identical to, or confusingly similar with, well-known Italian trademarks, such as, for example, <sparcosrl.com>, <zegnaermenegildo.net> and <nutellaferrero.com> (see Annexes 4, 5, 6 to the Complaint). It is also significant that the domain name <elenamiro.net> resolves in a link to a pornographic website in Italian, a clear evidence that Respondent expects to attract (among others) Italian users looking for information on an Italian fashion stylist and products.
Respondent uses the domain name in bad faith. The default page of <elenamiro.net> resolves in a pornographic page selling various services connected with pornography. Consequences for Complainant as a reputable fashion company are potentially catastrophic, should even a minority of Internet users come to believe that Complainant is actually associated with pornography. As the Panel stated in the case Motorola, Inc. v. NewGate Internet, Inc. (WIPO Case No. D2000-0079), "while many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody elseís trademark as a domain name (or even as a meta-tag) clearly does not constitute a bona fide offering of goods or services when the website owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be bona fide."
That redirection to pornographic sites from a domain name incorporating a well-known trademark is, per se, evidence of bad faith has been confirmed by several Panel decisions, see e.g.:
- Ty, Inc. v. O.Z. Names (WIPO Case No. D2000-0370), finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith;
- Youtv, Inc. v. Alemdar (National Arbitration Forum Case No. FA 94243), finding bad faith where Respondent attracted users through a domain name similar to a trademark it did not own and linked its website to pornographic websites;
- Oxygen Media, LLC v. Primary Source (WIPO Case No. D2000-0362), finding bad faith even where Respondent merely threatened to develop the domain name in question into a pornography site;
- Simple Shoes, Inc. v. Creative Multimedia Interactive (National Arbitration Forum Case No. 0008000095343), according to which "linking a domain name that is identical or confusingly similar to Complainantís mark to a pornographic site is evidence of registration and use in bad faith";
- Dell Computer Corporation v. RaveClub Berlin (WIPO Case No. D2002-0601), stating inter alia that "the fact that the pornographic website uses "mouse-trapping" techniques to prevent visitors from leaving it [a circumstance also applicable to our case, where a cascade of other pornographic websites opens automatically when one tries to close the initial window] clearly reinforces the bad faith use of the disputed domain name";
- Six Continents Hotels, Inc. v. Seweryn Nowak (WIPO Case No. D2003-0022), noting that "the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith";
- Cattlemens v. Menterprises ĖWeb Development (CPR Case No. CPR0304), concluding that "a pornographic site (Ö) is [inherently] antagonistic to the legitimate activities of Complainant"; and many others.
All the above decisions refer to cases as clear as the present one of "pornosquatting," where a cyber squatter tries to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic website. In particular:
- a well-known trademark is used;
- the site to which the user is redirected is obviously pornographic;
- the site is commercial, i.e. in order to access further pornographic images the Internet user is invited to pay; and
- there is a "mouse-trapping effect" making it more difficult for the casual Internet user to leave the pornographic website.
The Respondent has not replied to the Complainantís contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
The Complainant has shown that it is the proprietor of the trademark "ELENA MIRO," which is protected by several trademark registrations throughout the world.
In view of the above it is the Panelistís opinion the domain name <elenamiro.net> is confusingly similar to the trademark "ELENA MIRO" of the Complainant, except for the addition of ".net." Accordingly, the Panelist finds that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Given the Respondentís failure to submit a response, the Respondent has not proven that he has any prior rights or legitimate interests in the domain name. Nor has the Complainant authorised the Respondentís activities or has any control over these activities.
The prerequisites in Paragraphs 4(a)(i) and (ii) of the Policy are therefore fulfilled.
Paragraph 4(a)(iii) of the Policy further provides registration and use of the domain names in bad faith.
Given the Respondentís failure to file a response, the Panel accepts as true all the allegations of the Complaint, vide e.g. Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (February 24, 2000), ß d. The Respondentís default does not, however, translate into an automatic ruling for the Complainant. To the contrary, the Complainant still must establish a prima facie showing that, under the Policy, it is entitled to transfer of the domain name.
The circumstances mentioned in Paragraph 4(b)(i)-(iv) of the Policy, if found by the Panel to be present, are examples of facts, which constitute evidence of the registration and use of a domain name in bad faith.
The fact that the disputed domain name is redirected to a pornographic website is a clear indication that the domain name has been registered and used in bad faith. As concluded in several prior WIPO cases (see e.g. Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370, Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362, Dell Computer Corporation v. RaveClub Berlin, WIPO Case No. D2002-0601 and Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) the redirection to pornographic sites from a domain name incorporating a well-known trademark is evidence of bad faith. As the Panel stated in Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022:
"Preliminary, it is commonly understood, under WIPO case law, that, whatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith."
Furthermore, the site to which the Respondent has linked the domain name <elenamiro.net> is commercial, since Internet users are invited to pay a fee in order to access further pornographic material. This conduct per se constitutes bad faith in accordance with Paragraph 4(b)(iv) of the Policy. The site also has a "mouse-trapping" effect, which makes it more difficult to leave the pornographic site. As stated in Dell Computer Corporation v. RaveClub Berlin, WIPO Case No. D2002-0601:
"The fact that the pornographic website uses Ďmouse-trappingí techniques to prevent visitors from leaving it clearly reinforces the bad faith use of the disputed domain name."
Finally, the Complainant has shown that the Respondent has registered several other domain names, which are identical to, or confusingly similar with well-known Italian trademarks, such as <sparcosrl.com>, <zegnaermenegildo.net> and <nutellaferrero.com>. Furthermore, the website to which the domain name <elenamiro.net> is linked is in Italian, which, in accordance with the allegations of the Complainant, indicates that the Respondentís aim is to attract Italian Internet users searching for information regarding Italian fashion products.
In view of the above the Panelist finds that the Respondent has registered and used the domain name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy. Therefore, all the prerequisites for cancellation or transfer of the domain names according to Paragraph 4(i) of the Policy are fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts, the Panelist decides that the domain name registered by the Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondentís domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the domain name <elenamiro.net> be transferred to the Complainant.
Dated: September 9, 2003