WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dolce & Gabbana s.r.l. v. yami guang lin
Case No. D2013-0602
1. The Parties
Complainant is Dolce & Gabbana s.r.l. of Milan, Italy, represented by Studio Turini, Italy.
Respondent is yami guang lin of Putian, China.
2. The Domain Name and Registrar
The disputed domain name <dolcegabbana-pascher.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2013. On April 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 8, 2013.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on April 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 30, 2013.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 6, 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 trademark upon which the Complaint is based is DOLCE & GABANNA.
According to the documentary evidence and contentions submitted, Complainant is the exclusive licensee of a number of trademark registrations for the DOLCE & GABANNA trademark around the world, including Italian Trademark Registration No. 372387, filed on July 26, 1985, and renewed as 1134881 on June 15, 2005; International Trademark Registration No. R555568, registered on February 14, 1990; International Trademark Registration No. 625152, registered on July 13, 1994; International Trademark Registration No. 666432, registered on April 24, 1996; Community Trademark Registration No. 000454066, registered on February 15, 1999; Community Trademark Registration No. 001842079, registered on December 4, 2001; United States Trademark Registration No. 1418412, registered on November 25, 1986.
The Panel notes that the trademark DOLCE & GABANNA, consisting of two Italian surnames, those of Domenico DOLCE and Stefano GABBANA, founders of the “Dolce & Gabbana” maison, has been considered in previous UDRP decisions as extremely well known internationally in the area of fashion. See, e.g., Dolce & Gabbana S.r.l. v. Domains by Proxy, Inc. / Renee Carr, WIPO Case No. D2011-0597. The Panel concurs with such finding. The Panel also notes that Complainant sells its products also through its official online stores at “www.store.dolcegabbana.com” and “dolcegabbana.com/store”.
The disputed domain name was registered with the Registrar on October 22, 2012.
5. Parties’ Contentions
Complainant argues that the disputed domain name is identical to the trademark DOLCE & GABANNA because (i) the disputed domain name is composed of the same root of Complainant’s trademark (“dolcegabbana”), with the added suffix “pas cher”, which means “cheap” in French, and (ii) the suffix does not extenuate the likelihood of confusion with Complainant’s trademark, but rather increases the likelihood of confusion as it is clearly describing low cost products of Complainant since they are counterfeit products.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent was not authorized, licensed or otherwise allowed by Complainant or by the trademark owner to use the name “dolcegabbana”, nor to apply for any domain name incorporating its trademark under any circumstances; and (ii) Respondent is not commonly known by that name.
Finally, Complainant contends that the disputed domain name has been registered and is being used in bad faith by Respondent because: (i) the trademark DOLCE & GABANNA is a world-famous trademark, and Respondent knew or should have known of the registration and use of the trademark DOLCE & GABANNA prior to registering the disputed domain name; (ii) that prior knowledge of a famous trademark has been considered as evidence of bad faith; (iii) Respondent is not making a “bona fide offering of goods or services” with the disputed domain name as the same was selected by Respondent with clear intent of commercial gain; (iv) Respondent was, in the past, using the disputed domain name to sell counterfeit products of Complainant, and now uses it to resolve to a parked page showing links to third parties’ websites, including those offering goods and services in direct competition with Complainant’s products.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that a respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc, supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
The Panel notes that previous UDRP cases have long reached a consensus that an exclusive licensee has rights in a trademark for the purposes of the Policy. See Dolce & Gabbana S.r.l. v. Domains by Proxy, Inc. / Renee Carr, supra.
The disputed domain name incorporates the trademark DOLCE & GABANNA in its entirety with the exclusion of the connecting symbol “&” and the addition of the suffix “pascher”. In this type of combination it is clear that the trademark DOLCE & GABANNA stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282. That is particularly true where the trademark is well known, as in the instant case.
The addition of the generic term “pascher” increases the likelihood of confusion because it refers to the offer of cheap products similar or identical to original DOLCE & GABANNA products. Also, it has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, supra.
Therefore, the Panel finds that the disputed domain name <dolcegabbana-pascher.com> is confusingly similar to the trademark DOLCE & GABANNA and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The disputed domain name is not the name of Respondent or the name by which Respondent is commonly known, and the disputed domain name is not Respondent’s trade name or trademark.
According to Complainant, in the past Respondent was using the disputed domain name to sell counterfeit products of Complainant. Respondent has not denied Complainant’s contentions. The Panel finds that there is no bona fide offering of goods or services where the disputed domain name resolved to a website that sold counterfeit goods.
According to the documentary evidence and contentions submitted, the disputed domain name was later used to provide advertising links to fashion products. The Panel concurs with the prior UDRP decisions holding that there is no bona fide offering of goods or services where the disputed domain name resolves to a website with sponsored links including to competitive third-party websites. See ACCOR v. Steve Kerry / North West Enterprise, Inc., WIPO Case No. D2006-0649. As decided in Gene Kelly Image Trust v. BWI Domain Manager, WIPO Case No. D2008-0342, “[t]he existence of sponsored links on the website also clearly demonstrates that the Respondent is not using the disputed domain name as a legitimate non-commercial fan site. On the contrary, it appears plain that the Respondent is using the disputed domain name to make a commercial gain.”
On May 17, 2013, the Panel tried to visit the webpage to which the disputed domain name resolved, but that attempt was unsuccessful. The deactivation of Respondent’s website does not affect a finding that Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
The Panel is convinced that Complainant has done enough to establish a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name, and by defaulting Respondent has failed to provide the Panel with any evidence of Respondent’s rights to or legitimate interests therein. In addition, none of the three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the disputed domain name (paragraph 4(c) of the Policy) shows a result in favor of the Respondent.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of the trademark DOLCE & GABANNA when Respondent registered the disputed domain name. In fact, the combination of the word “dolcegabanna”, which is recognized as a well-known trademark in the fashion field, with the word “pascher”, which refers to cheap products, indicates that Respondent acted with opportunistic bad faith because the disputed domain name was connected with the activities identified by Complainant’s trademark.
As previously noted, Complainant contends that previously the disputed domain name was used to sell counterfeit products of Complainant. Using a domain name for the sale of counterfeit goods is evidence of bad faith.
The Panel also concurs with the understanding of several other UDRP panels that the use of a domain name to point to a website that offers sponsored links to other websites providing services or goods which are similar to those offered by Complainant is evidence of bad faith use. Mudd, (USA) LLC v. Unasi, Inc.(MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.
Paragraph 4(b)(iv) of the Policy provides that if, by using the domain name the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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, that circumstance shall be evidence of the registration and use of a domain name in bad faith.
The Panel has found before, for the purpose of determining rights or legitimate interests, that Respondent was not making any legitimate noncommercial or fair use of the disputed domain name. The fact that Respondent’s website is now deactivated does not affect a finding of bad faith use of the disputed domain name.
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith, and finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <dolcegabbana-pascher.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Date: May 20, 2013