WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dolce & Gabbana s.r.l. v. Xiuhe Qi
Case No. D2012-2302
1. The Parties
The Complainant is Dolce & Gabbana s.r.l. of Milano, Italy, represented by Studio Turini, Italy.
The Respondent is Xiuhe Qi of Hubei, China.
2. The Domain Name and Registrar
The disputed domain name <dolcegabbananegozi.com> is registered with HooYoo Information Technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2012. On November 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 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 November 26, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On November 29, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 December 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 14, 2013. 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 offers fashion clothing and accessories all over the world under the trademark DOLCE & GABBANA, and has done so since at least the mid-1980s. The Complainant is the exclusive licensee of a number of trademarks consisting of the phrase “dolce & gabbana” registered in a number of jurisdictions, including an International Trademark number R555568 registered on February 14, 1990. The Complainant also operates a product sales and advertising website linked to <dolcegabbana.com>.
The Respondent is based in China. The disputed domain name was registered on March 22, 2012.
5. Parties’ Contentions
The Complainant requests the proceedings be in English because English is a widely spoken and understood international auxiliary language, using English will make the proceeding easier and faster, and English is not a native language for either party, therefore using English is fair for both parties.
The Complainant claims the disputed domain name is confusingly similar to the Complainant’s DOLCE & GABBANA trademark because the disputed domain name is identical to the trademark and because the insertion of the generic term “negozi” (Italian for “stores”) does not distinguish the disputed domain name from the DOLCE & GABBANA trademark. Instead, the inclusion of the word “negozi” increases the likelihood of confusion because the term falsely indicates the website linked to the disputed domain name has Dolce & Gabbana products for sale.
The Complainant claims the Respondent has no rights or legitimate interests in the disputed domain name because (1) the Respondent is not commonly known by the disputed domain name, and (2) the Complainant has no connection with the Respondent and has not authorized, licensed or otherwise allowed the Respondent to use its trademark or to apply for any domain name incorporating its trademark under any circumstances.
The Complainant claims the Respondent has registered and is using the disputed domain name in bad faith because (1) the Complainant’s DOLCE & GABBANA trademark is very well-known, and the Respondent was or should have been aware of the Complainant’s rights when registering the disputed domain name, (2) the Respondent’s registration of the disputed domain name is preventing the Complainant from utilizing its mark in a corresponding domain name, (3) the Respondent is offering counterfeit/mislabeled goods through the website linked to the disputed domain name, (4) the offer of counterfeit goods on the website linked to the disputed domain name indicates that the Respondent has intentionally attempted to attract and deceive consumers by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website linked to the disputed domain name, and (5) the Respondent has refused to communicate with the Complainant and/or respond to offers to purchase the disputed domain name by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. The Complainant has requested that English be recognized as the language of the proceeding. The Respondent has not commented regarding the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited the Respondent to answer the Complaint in either language.
In Annex 13 submitted by the Complainant, it can be seen that content featured on the website linked to the disputed domain name is displayed mainly in Italian and partially in English, but not in Chinese/Mandarin. This demonstrates to the Panel that the Respondent has a working knowledge of the English language. Furthermore, the disputed domain name features a non-Chinese language word added to a portion of the Complainant’s DOLCE & GABBANA trademark. Taking the foregoing points into account along with the Respondent’s default and lack of any communication in connection with this proceeding, the Panel concludes that English should be the language of the proceeding. Translation of the Complaint and other materials would cause unnecessary cost and delay.
B. Identical or Confusingly Similar
The record shows the Complainant has the exclusive right to use the trademark DOLCE & GABBANA, that the Complainant has the authority to enforce its rights under the Policy, and that rights in DOLCE & GABBANA have been recognized internationally prior to the registration of the disputed domain name in 2012. The record also shows that the Respondent is attempting to use the disputed domain name in connection with the sale of purported goods of the Complainant.
The disputed domain name reproduces the DOLCE & GABBANA trademark with only the omission of the non-distinctive ampersand and with the addition of the generic word“negozi,” which relates to the Complainant’s business, and the standard suffix “.com”.
“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of Respondent’s residence.” See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668. The Panel finds that the Complainant has established its rights in the DOLCE & GABBANA trademark.
The mere addition of a generic term to a complainant’s trademark is not normally sufficient to overcome a finding of confusing similarity. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to the mark.” Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227. “The issue is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify moving on to other elements of a claim for cybersquatting.” F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323. “Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.” Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227.
Here, the disputed domain name incorporates the entirety of the distinctive portion of the Complainant’s trademark, and the additional generic term does not reduce the prominence of the Complainant’s trademark therein. Rather, the additional generic term increases the likelihood of confusion because it suggests the Complainant’s products are being offered for sale by the Respondent, and so the term relates directly to the Complainant’s business and goods associated with the DOLCE & GABBANA trademark. Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809. Furthermore, the Panel does not believe that the inclusion of the generic term to the Complainant’s DOLCE & GABBANA trademark, or the omission of the non-distinctive ampersand, creates a new or different mark or literal element which is materially different from the Complainant’s trademark. It is therefore likely that consumers would be confused by the use of the distinctive portions of the trademark in the disputed domain name. This is particularly true because the official website operated by the Complainant “www.dolcegabbana.com” also omits the ampersand.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s DOLCE & GABBANA trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the phrase “dolcegabbananegozi.” As such, the Complainant has successfully presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted. Discussed more fully below, the Panel also finds the Respondent is not engaged in a bona fide offering of goods and services. Finally, there is no evidence in the record to indicate that the Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the disputed domain name.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
The record shows the Complainant has enforceable rights in DOLCE & GABBANA that precede registration of the disputed domain name. The disputed domain name is predominantly composed of the trademark and incorporates the distinctive portions of the trademark in their entirety. A simple Internet search for “dolce gabbana” results in links predominantly related to the Complainant and its websites, and it is assured, given the notoriety of the Complainant’s business, that this was also true at the time the disputed domain name was registered. The Panel finds that the Respondent was likely aware of the Complainant or should have known of the Complainant when registering the disputed domain name.
The record also shows (Annex 13 to the Complaint) that the website linked to the disputed domain name features the DOLCE & GABBANA trademark, as well as associated style names and stylized marks, and advertises similar-looking goods as those offered by the Complainant under DOLCE & GABBANA. The Panel finds that the Respondent’s advertisement of goods constitutes commercial competition with the Complainant and the Complainant’s products that trades on the goodwill invested by the Complainant in the DOLCE & GABBANA trademark.
The use of a domain name featuring a trademark to advertise goods or services which compete with those provided under that trademark supports a finding that the domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728. Moreover, by registering a domain name confusingly similar to the Complainant’s DOLCE & GABBANA trademark and advertising goods in competition with the Complainant using the Complainant’s well-known marks and style names, the Respondent is intentionally diverting traffic from the Complainant’s business and websites.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use.
The record shows that the Respondent has used the disputed domain name to advertise apparently counterfeit goods in direct commercial competition with the Complainant and the Complainant’s products. Moreover, the incorporation of the distinctive portions of the Complainant’s trademark into the disputed domain name combined with the content featured on the linked website, all implemented without publishing an accurate disclosure of the Respondent’s relationship with the Complainant, illustrates an intent on the part of the Respondent to deceive consumers into believing that the disputed domain name and the goods offered for sale by the linked website are associated with, affiliated with, and/or endorsed by the Complainant. The record offers no evidence leading to a different explanation. The Panel finds that these actions cannot constitute a bona fide or good faith use.
The Panel concludes that the Respondent’s conduct falls within the scope of 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 disputed domain name <dolcegabbananegozi.com> be transferred to the Complainant.
Kimberley Chen Nobles
Date: January 21, 2013