WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calzedonia S.p.A. v. David Martin Lopez de la Oliva
Case No. D2013-0972
1. The Parties
The Complainant is Calzedonia S.p.A. of Verona, Italy, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is David Martin Lopez de la Oliva of Zamora, Spain.
2. The Domain Name and Registrar
The disputed domain name <bikiniscalzedonia.com> (the “disputed domain name”) is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2013. On May 31, 2013, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On June 3, 2013, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 June 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2013. The Respondent submitted an informal Response on June 24, 2013. On June 25, 2013 the Center sent a reminder to the Respondent, referring to June 25, 2013 as the last day for filing a formal Response, and informed the Respondent that if no further communication was received from the Respondent, the Center would regard the informal Response as the Response from the Respondent.
On June 25, 2013 the Center also sent a possible settlement email to the parties. On June 26, 2013 the Center received the Complainant’s confirmation by email to not suspend the proceedings and requesting the Center to proceed with the panel appointment. Accordingly, the Center notified the parties of the commencement of the panel appointment process on June 26, 2013.
The Center appointed Petter Rindforth as the sole panelist in this matter on July 1, 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.
The Panel shall issue its Decision based on the Complaint, the informal Response, the Policy, the Rules and the Supplemental Rules. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is the owner of the trademark CALZEDONIA, registered in a number of countries and regions, including:
CALZEDONIA (word), Community Trademark Registration (CTM) No. 009096926, filed on May 11, 2010 and registered on October 5, 2010 in respect of goods in Classes 3, 9, 14, 18, 24 and 28.
CALZEDONIA (fig), Community Trademark Registration (CTM) No. 003382686, filed on October 1, 2003 and registered on April 11, 2005 in respect of goods and services in Classes 25 and 35.
CALZEDONIA (word), Community Trademark Registration (CTM) No. 001874452, filed on September 27, 2000 and registered on April 3, 2002 in respect of goods and services in Classes 25 and 35.
The disputed domain name was registered on April 3, 2012.
5. Parties’ Contentions
The Complainant informs that the Complainant is the owner of various trademark registrations of CALZEDONIA for clothing, mainly underwear and swimwear, in several countries worldwide. The said trademark has been used intensively in commerce and continues to be used worldwide. The Complainant communicates on the Internet through various websites, and has registered domain names with the plain trademark CALZEDONIA, as well as CALZEDONIA in combination with general terms such as “beachwear”, “clothing”, “apparel”, “shop” etc., and also various domain names with misspellings. Most of these domain names were registered in November 2006. The Complainant’s website is available in several languages, including Spanish.
By setting up a franchising network, the Complainant’s Calzedonia network nowadays boasts more than 1,400 shops throughout the world, and the Complainant states that CALZEDONIA is a well-known trademark in many countries worldwide and embodies substantial goodwill.
The Complainant argues that the disputed domain name contains the trademark CALZEDONIA and the descriptive element “bikinis”, which does not cause the disputed domain name to be sufficiently dissimilar from the trademark CALZEDONIA.
Further, the Complainant states that the Respondent has no rights or legitimate interests in respect of <bikiniscalzedonia.com>, as the Respondent does not own any trademark or trade name rights for “Bikiniscalzedonia” respectively “Calzedonia”, and has no reputation related to the names. The Complainant, using exclusive franchisers, has not given the Respondent permission and/or a license to use the mark CALZEDONIA, and there is no legitimate and noncommercial use of the disputed domain name.
The Complainant concludes that the Respondent has been aware of the CALZEDONIA trademark at the time of the registration of the disputed domain name, especially referring to the fact that the Respondent has used the trademark in combination with the element “bikinis” in the disputed domain name. The Complainant further concludes that the Respondent does not have a legitimate interest in the registration of the disputed domain name <bikiniscalzedonia.com> since it has not been redirected to a website but has been redirected to a "parking website" with sponsored links.
Finally, the Complainant states that the disputed domain name was registered and is being used in bad faith. The disputed domain name <bikiniscalzedonia.com> is only used for a parking site with the purpose of sponsored links. The trademark CALZEDONIA was deliberately chosen because of the fact that it is a well-known trademark, especially for beachwear and bikinis, and is therefore particularly suitable to attract customers of fashion shops for the sponsored links. Diverted customers generate business for the Respondent.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
In the Respondent’s informal Response, the Respondent informs that the disputed domain name refers to the title of a – by the Respondent and another person created – successful summer song based on the two words Calzedonia and Bikini. The song called “Bikinis Calzedonia” was to be promoted on the Internet and therefore the disputed domain name <bikiniscalzedonia.com> was registered.
According to the Respondent, there is no “bad use” of the disputed domain name, and the Respondent does not earn any money related to the disputed domain name <bikiniscalzedonia.com>.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark CALZEDONIA, registered in in a number of countries and regions, including the European Union (Community Trademark Registrations).
The relevant part of the disputed domain name is “bikiniscalzedonia”. The addition of the generic top-level domain “.com” is insufficient to distinguish the disputed domain name from the Complainant’s mark.
The Panel concludes that the disputed domain name consists of the Complainant’s trademark CALZEDONIA, with the addition of the generic word “bikinis”. As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark.
The generic word may even add to the confusing similarity (see Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ‘online’ is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”); see also Goyard St-Honore v. WhoisGuard, WhoisGuard Protected, Brucef Lee, WIPO Case No. D2011-1837 (“In this case, the descriptive terms “bags” and “shop” have been appended to the Complainant’s registered GOYARD mark, which may serve to heighten Internet user confusion”).
In this case, the Complainant sells – among other goods – bikinis under the trademark CALZEDONIA.
The Panel therefore concludes that the disputed domain name <bikiniscalzedonia.com> is confusingly similar to the Complainant’s trademark CALZEDONIA.
B. Rights or Legitimate Interests
The Respondent has not contested the Complainant’s statement that the Respondent is not affiliated with the Complainant and has no authorization from the Complainant to register any domain names incorporating the Complainant’s trademark.
The Respondent claims – as understood by the Panel - that the disputed domain name <bikiniscalzedonia.com> is not related to the Complainant, but instead the name of a “successful summer song” called “Bikinis Calzedonia”, and further that there is no “bad use” of the disputed domain name, and that the Respondent does not earn any money related to the disputed domain name <bikiniscalzedonia.com>. The Respondent has however not provided any evidence of its intended use of the disputed domain name for the promotion of its alleged song. Furthermore, the Panel notes that the Respondent is using the disputed domain name to operate a domain parking website that displays third-party hyperlinks to websites not related to any songs but in fact some even in direct competition with the Complainant. Such use does not establish rights or legitimate interests. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, “Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights”; see also Fluor Corporation v. Above.com Domain Privacy/ Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is “well established” that the use of a domain name to “trade […] off Complainant’s trademark […] is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent); and CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd., WIPO Case No. D2010-1680 (registration of a domain name “for the purpose of misleading and diverting consumers” cannot give to rise rights or legitimate interests).
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has several community trademark registrations for CALZEDONIA, covering the whole European Union, including Spain – the residence of the Respondent.
The Respondent registered the disputed domain name <bikiniscalzedonia.com> almost 12 years after the Complainant filed its Community Trademark No. 001874452 CALZEDONIA (word), covering goods in Class 25. The disputed domain name is created by a clear combination of the trademark with the addition of a word that describes the goods connected with the trademark.
Thus, it is clear to this Panel that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name, and that the addition of the generic word “bikinis” was not made in order to make a difference, but rather a deliberate attempt to create a likelihood of confusion with the Complainant’s mark and goods. See GA Modefine S.A. v. Thomas Casey, WIPO Case No. D2009-0826 (finding that a respondent’s knowledge of a complainant’s trademark rights, and its bad faith registration of the disputed domain name, may be inferred when the domain name merely consists of the complainant’s trademark and a term “clearly relate[d]” to the complainant’s products), see also Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry - Succession Saint Exupéry - D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085.
The disputed domain name is used for a website with links to other websites offering for sale competing goods, once again a clear relation to the Complainant’s trademark and goods with no relationship to any “summer song” as claimed by the Respondent. The Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website. See Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith); see also Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names”).
Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
For all 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 <bikiniscalzedonia.com> be transferred to the Complainant.
Date: July 8, 2013