WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jil Sander AG v. Mr. Stanley Filoramo
Case No. D2003-0816
1. The Parties
The Complainant is Jil Sander AG, Hamburg, Germany, represented by Studio Legale Jacobacci & Perani, Italy.
The Respondent is Mr. Stanley Filoramo, Montréal, Canada.
2. The Domain Name and Registrar
The disputed domain name <jilsander.org> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2003. On October 14, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On October 14, 2003, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 (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 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 10, 2003.
The Center appointed Ilhyung Lee as the sole panelist in this matter on November 18, 2003. 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 Respondent has defaulted in this proceeding. The Rules, paragraphs 5(e) and 14(a), allow the Panel to decide the dispute based on the complaint. The Panel accepts as true those assertions in the complaint necessary to the resolution of the dispute.
The Complainant, Jil Sander AG, is a German company engaged in the fashion business. The companyís name adopts the nickname or pseudonym of an internationally well-known fashion designer, Ms. Heide-Marie Sander. Ms. Sander is the original registrant of a number of trademarks comprising of or containing "JIL SANDER," which have been assigned to the Complainant. The Complainant has trademark registrations in Germany, the United States, and Canada, among many other countries. The Panelís search on the Internet site for the Canadian Intellectual Property Office indicates that the Complainant is the current owner of two trademarks in Canada, both bearing "JILSANDER," one of which was registered on October 10, 1986, and the other on October 9, 1987.
The Respondent, whose address of record is in Canada, is the current registrant of the domain name <jilsander.org>, which was registered on August 29, 2003. Internet users who type in the domain name are re-directed to "a pornographic page selling images and videos of Ďethnicí transsexuals and hermaphrodites."
5. Partiesí Contentions
The Complainant argues that: the Respondentís domain name <jilsander.org> is confusingly similar with the trademark JIL SANDER; the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name was registered and is used in bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to prevail in this proceeding, the Complainant must prove each of the following three elements:
(i) the domain name in dispute 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.
A. Identical or Confusingly Similar
The Complainant has rights in its trademark, JIL SANDER, as well as JILSANDER. The Respondentís domain name is <jilsander.org>. The domain name merely adds the ".org" generic top level domain to the Complainantís trademark. The domain name and the trademark are confusingly similar. The Complainant has proved this element of its case.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondentís rights or legitimate interests in the domain name can be demonstrated by: the Respondentís use of the domain name in connection with a bona fide offering of goods or services; or the Respondent being commonly known by the domain name; or the Respondent making a legitimate noncommercial or fair use of the domain name. There is no evidence in the case record to indicate that any of these circumstances are present. Importantly, the circumstances identified in paragraph 4(c) to support rights or legitimate interests in the domain name are not exhaustive. Nevertheless, the Panel is at a loss to explain any facts or circumstances that could demonstrate the Respondentís rights or legitimate interests in its use of the <jilsander.org> domain name to divert Internet users to sexually graphic images and pornographic products.
C. Registered and Used in Bad Faith
The Complainantís trademark, JIL SANDER, is used in connection with various fashion-related products. It is registered in numerous countries in several continents, and is well-known by the consuming public. The Respondentís domain name <jilsander.org> re-directs Internet users to a site with sexually graphic images and that offers pornographic products for sale. As the Complainant urges, it is difficult to imagine the Respondent selecting the domain name without knowledge of the Complainantís trademark.
Paragraph 4(b) of the Policy describes circumstances that are evidence of bad faith in the registration and use of a domain name. Most applicable to the present dispute is paragraph 4(b)(iv), which provides that bad faith is shown when the Respondent, by using the domain name, has "intentionally attempted to attract, for commercial gain, Internet users to [the Respondentís] website . . ., by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement" of the Respondentís website or of products on the website. Indeed, the Complainant expresses great concern of Internet users coming to believe that the Complainant is actually associated with the sale of the pornography displayed on the re-directed website. WIPO Panel decisions have determined that the use of a domain name that is confusingly similar to anotherís protected trademark to divert Internet users to a pornographic site is consistent with the finding that the domain name was registered and is being used in bad faith. Six Continental Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 (March 4, 2003); Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860 (August 29, 2001); CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000). The finding of bad faith is also appropriate here.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <jilsander.org> be transferred to the Complainant.
Dated: November 28, 2003