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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Franklin & Marshall SRL v. 34768526, minggao qiang

Case No. D2011-1194

1. The Parties

1.1 The Complainant is Franklin & Marshall SRL of Italy (the “Complainant”) represented by LegalBase (Pvt) Limited, Sri Lanka.

1.2 The Respondent is 34768526, minggao qiang of Fujian, China (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <franklinmarshallstore.com> (the “disputed Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2011. On July 13, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed Domain Name. On July 15, 2011, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 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”).

3.3 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 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2011.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on August 11, 2011. 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

4.1 The Complainant is a corporation organized under the laws of Italy, with its principal place of business in Montorio, Italy. The Complainant creates and produces clothing and accessories using the FRANKLIN & MARSHALL mark in connection with college – vintage influenced design for T-shirts, sweatshirts, shoes and handbags. The Complainant has seven flagship stores in Rome, Verona, Milan, Toulouse, Tokyo, Osaka and Paris and intends to open another three stores at the end of the summer in Dubai, Kuwait and Amsterdam. The Complainant’s approximate marketing expenditure for 2010 was 2,500,000.00 Euros and worldwide turnover for the same year was 40,486,857.00 Euros.

4.2 The Respondent is located in China and according to the WhoIs database, the disputed Domain Name was registered on November 28, 2010.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant has registered the FRANKLIN & MARSHALL trademark globally and also obtained a number of selected trademark registrations for the said trademark in China where the Respondent is based since 2003. The Complainant has thus developed an enormous amount of goodwill in the FRANKLIN & MARSHALL trademark and the public has come to associate the trademark exclusively with high quality items marketed by the Complainant as is confirmed by a number of recent newspaper articles attached to the Complaint. The Complainant has also registered several domain names, including <franklinandmarshall.com and <franklinandmarshall.net> which revolve to the Complainant’s official website located at “www.franklinandmarshall.com”. The Complainant states further that the Franklin & Marshall website enables Internet users to access information regarding Franklin & Marshall and its merchandise and to purchase genuine Franklin & Marshall products.

5.2 The Complainant submits that the disputed Domain Name, <franklinmarshallstore.com> is confusingly similar to the Complainant’s FRANKLIN & MARSHALL trademark as Internet users who intend to purchase Franklin & Marshall products online may inadvertently type the disputed Domain Name into the address bar on their web browser and be directed to the infringing website. It is submitted that such Internet users will most likely be confused into thinking that the infringing website is the Complainant’s official website because of the use of the Franklin & Marshall name. The Complainant therefore submits that the initial interest confusion or diversion of Internet traffic by the Respondent is illegal because it wrongfully exploits the Complainant’s accumulated goodwill in the FRANKLIN & MARSHALL trademark.

5.3 The Complainant further submits that the addition of the word “store” to the disputed Domain Name adds to the consumer confusion rather than eliminating the likelihood of confusion between the disputed Domain Name and the Complainant’s trademark, domain names and website. In this regard the Complainant relies on a number of cases, including the case of Calvin Klein Trademark Trust, Warnaco Inc. v. Tahir Irshad WIPO Case No. D2011-0116. The Complainant also submits that the disputed Domain Name wholly incorporates the Complainant’s trademark and in line with previous panel decisions as can be found in Revlon Consumer Products Corporation v. Morel, WIPO Case No. D2002-0215 and F.Hoffman – La Roche G v. MFS Holdings, WIPO Case No. D2010-0307, the incorporation of a trademark in its entirety maybe sufficient to establish that a domain name is identical or confusingly similar to the complainant’s trademark.

5.4 The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name as the Respondent has no connection or affiliation with the Complainant and neither has the Respondent received any license or consent, express or implied, to use the Complainant’s trademark in a domain name or in any other manner. The Complainant contends further that the Respondent has never been known by the disputed Domain Name and therefore can lay no claim to any legitimate interest and where the disputed Domain Name is being used purportedly to advertise the Complainant’s products and to misdirect Internet traffic to the Respondent’s infringing website, such use is contrary to a bona fide offering of goods and services or use pursuant to the holding of legitimate interest as held in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477. The Complainant further argues that the Respondent’s misappropriation of the disputed Domain Name was not by accident as the trademark FRANKLIN & MARSHALL, is not one which traders would legitimately choose unless seeking to create an impression of an association with the Complainant as found in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

5.5 With regards to registration and use in bad faith, the Complainant submits that it is inconceivable that the Respondent was unaware of the Complainant’s exclusive rights in the trademark and name FRANKLIN & MARSHALL, at the time of the registration, therefore the Respondent must have registered the disputed Domain Name in bad faith. The Complainant further argues that the choice of the disputed Domain Name by the Respondent which wholly incorporates the Complainant’s mark was not accidental, but was a deliberate choice, geared towards the exploitation of the famous well-known trademark exclusively owned by the Complainant for unlawful commercial gain. Such unlawful exploitation it is submitted, is evidence of use of the disputed Domain Name in bad faith, particularly, where the Respondent is purportedly offering the Complainant’s products for sale on the Respondent’s infringing website. The Complainant in support relies on the case of Microsoft Corporation v. Source One Management Services Inc., WIPO Case No. D2005-0508.

5.6 The Complainant draws the Panel’s attention to the fact that the Respondent without valid consent utilizes the Complainant’s advertising material throughout the infringing website and offers products identical to or similar to the Complainant’s products for sale on the infringing website. The Complainant submits further that such conduct is indicative of bad faith use in line with the case of Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774.

B. Respondent

5.7 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inference as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; (iii) and that the disputed Domain Name has been registered and is being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in these proceedings.

A. Identical or Confusingly Similar

6.3 The Panel finds on the unchallenged facts as recounted by the Complainant that the disputed Domain Name, <franklinmarshallstore.com> is confusingly similar to the Complainant’s well-known FRANKLIN & MARSHALL trademark. Apart from owning a number of trademark registrations globally including in Asia and China where the Respondent is based, the Panel observes also that the Complainant has registered several domain names including for instance, <franklinandmarshall.com> and <franklinandmarshall.net>. In arriving at this finding, this Panel accepts that the disputed Domain Name wholly incorporates the Complainant’s trademark (with the exception of the ampersand) and the mere addition of the descriptive word “store” does not in any way sufficiently distinguish the disputed Domain Name from the Complainant’s trademark, name and registered domain names. The Panel is equally satisfied that the addition of the descriptive word “store” or the suffix “com” does not prevent the likelihood of confusion in the minds of consumers or Internet visitors seeking information online about the Complainant’s products and merchandise.

6.4 In support of the finding above, the Panel has placed reliance on a number of cases cited by the Complainant, in particular, the recent case of Calvin Klein TrademarkTrust, Warnaco Inc., v. Tahir Irshad, WIPO Case No. D2011-0116 where the mere addition of the word “buy” to the disputed domain name in that case, <buycalvinkleinunderwear.com> was held to be an insignificant difference that will go unnoticed by the average consumer. Equally, relevant in this regard is the case of F. Hoffmann-La Roche AG v. MFS Holdings, WIPO Case No. D2010-0307 where following previous WIPO UDRP decisions, the panel in that case held that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark; in that case the disputed domain name <uk-xenical-online.com> was held to be confusingly similar to the complainant’s XENICAL mark.

6.5 Accordingly, the Panel finds that the Complainant has established the disputed Domain Name to be confusingly similar to the Complainant’s FRANKLIN & MARSHALL trademark in accordance with paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

6.6 This Panel finds that the Respondent has failed to provide any concrete evidence or circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4 (c) of the Policy. As the Complainant submits, the Respondent has not been granted any license or consent to use the Complainant’s name or trademark in a domain name or in any other manner. There is no evidence to demonstrate that the Respondent has ever been known by the disputed Domain Name. Moreover, the evidence adduced by the Complainant demonstrates that apart from using the disputed Domain Name to purportedly advertise products similar to or identical to the Complainant’s products, the Respondent uses the disputed Domain Name to misdirect Internet traffic to its website. Such conduct here cannot be described as the bona fide offering of goods or services or conduct in pursuance of legitimate interests as held in Wal-Mart Stores, Inc.v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477.

6.7 Just as the Complainant argues, this Panel finds that the Respondent’s misappropriation of the disputed Domain Name was by no means accidental; clearly the Respondent chose the Complainant’s well-known and famous trademark to create an impression of an association with the Complainant. The Complainant’s list of international trademark registrations goes back to the year 2002 or 2003. On November 28, 2010 according to the WhoIs database, the disputed Domain Name was registered. As was found in the case of Telstra Corporation Limited v. Nuclear MarshMallows, WIPO Case No. D2000-0003, the Respondent engaged in such conduct cannot be found to establish rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(a) of the Policy.

6.8 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

6.9 On the question of bad faith registration and use, the Panel finds that the disputed Domain Name was registered in bad faith and the Respondent has continued to use the disputed Domain Name in bad faith. The Panel has taken into account a number of unchallenged matters. First of all, it is inconceivable that the Respondent was unaware of the existence of the Complainant’s established worldwide rights in the FRANKLIN & MARSHALL trademark when the disputed Domain Name was registered. Secondly, the Respondent’s website offers for sale a variety of products described as Franklin Marshall T-shirts, shoes and bags and as the Complainant correctly argues, goods and merchandise purporting to be Franklin & Marshall products would not be so advertised on the website if the Respondent was unaware of the worldwide fame of the Complainant’s products and established exclusive rights. See in this regard the case of MasterCard International Incorporated v. Jose Carlos Bisognin Panzenhagen, WIPO Case No. D2009-0864 where the panel in that case held that the respondent knew or at least must have known of the complainant’s trademarks of MASTERCARD and MASTERCARD ONLINE at the time of registering the disputed domain name in that case. Thirdly, bad faith use is evidenced by several circumstances such as: (i) creating initial interest confusion, which attracts Internet users seeking the Complainant to the Respondent’s website because of an erroneous belief created by the Respondent that it is affiliated with the Complainant’s trademark; (ii) the Respondent’s intention to derive commercial gain from such Internet users contrary to the decision in Microsoft Corporation v. Source One Management Services, Incorporated, WIPO Case No. D2005-0508; (iii) the Respondent without consent utilizing the Complainant’s advertising material on its website to offer products identical or similar to those of the Complainant contrary to the decision in Nikon Corporation v. Technilab Incorporated, WIPO Case No. D2000-1774 where it was held that the use of the complainant’s trademark to sell the complainant’s products and those of its competitors was an improper use of the complainant’s trademark to attract Internet users to the respondent’s site for commercial gain by creating a likelihood of confusion as to source, sponsorship affiliation or endorsement of the site; (iv) the content of the website at the disputed Domain Name is clearly intended to mislead consumers into thinking that it is an official Franklin & Marshall website and the Respondent is deliberately trying to pass itself off as the Complainant. Fourthly, the Panel has taken into account the Respondent’s failure to challenge the evidence produced in support of these proceedings by the Complainant and has therefore made adverse inferences against the Respondent.

6.10 The Panel therefore finds that the Complainant has established the finding of bad faith registration and use within the ambit of the Policy.

7. Decision

7.1 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, <franklinmarshallstore.com> be transferred to the Complainant forthwith.

Ike Ehiribe
Sole Panelist
Dated: August 26, 2011

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