WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dolce & Gabbana S.r.l. v. duncanchua.com / Duncan Chua

Case No. D2013-1099

1. The Parties

The Complainant is Dolce & Gabbana S.r.l. of Milan, Italy, represented by Laura Turini, Italy.

The Respondent is duncanchua.com / Duncan Chua of Singapore, Singapore.

2. The Domain Name and Registrar

The disputed domain name <dolceandgabbanatheone.com> (the “Disputed Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2013. On June 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 19, 2013, 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.

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 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2013.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on July 30, 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

“Dolce” and “Gabbana” are the last names of the two famous designers Domenico Dolce and Stefano Gabbana, founders of the “Dolce & Gabbana” brand. The Complainant is an Italian company and the exclusive worldwide licensee of the DOLCE & GABBANA and DOLCE & GABBANA THE ONE trademarks and entitled to act in order to recover and register, in the Complainant’s name, Internet domain names. The DOLCE & GABBANA and DOLCE & GABBANA THE ONE trademarks have been registered in many countries, inter alia:

1. DOLCE & GABBANA THE ONE, Community Trademark No. 004938023, registered on April 12, 2007.

2. DOLCE & GABBANA THE ONE, International Trademark No. 892649, registered on March 20, 2006.

3. DOLCE & GABBANA, Italian trademark, No. 372387, filed on July 26, 1985, renewed on June 15, 2005.

4. DOLCE & GABBANA, International Trademark, No. R555568, registered on February 14, 1990.

5. DOLCE & GABBANA, International Trademark, No. 625152, registered on July 13, 1994.

According to WhoIs data, the Respondent is duncanchua.com / Duncan Chua. The Disputed Domain Name was registered on December 13, 2010.

The Registrar confirmed, in its email of June 19, 2013, that the Registration Agreement for the Disputed Domain Name is in English.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions could be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Disputed Domain Name <dolceandgabbanatheone.com> is identical to the Complainant’s DOLCE & GABBANA THE ONE trademark. The substitution of the word “and” for the ampersand does not in any way negate the confusing similarity encouraged by the Respondent as the term “and” bears the same meaning as the ampersand.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant is the exclusive licensee of the DOLCE & GABBANA and DOLCE & GABBANA THE ONE trademarks. The Respondent was not authorized, licensed, or otherwise allowed by the Complainant or by the owner of the trademark to use the name “dolcegabbana”, or to apply for any domain name incorporating its trademark. The Respondent is not commonly known by that name, either.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The DOLCE & GABBANA trademark is a famous trademark around the world. Against this backdrop, it is hard to believe that the Respondent was not aware of the existence of the Complainant’s trademark and reputation before registering the Disputed Domain Name. The registration of the Disputed Domain Name prevents the Complainant from reflecting its mark in a corresponding domain name, considering that the Disputed Domain Name is a “.com” domain name, the most common on the Internet. Furthermore, the Respondent is not offering a “bona fide offering of goods or services” with the Disputed Domain Name, which resolves to a parking web site where visitors are presented with a list of links that redirect to other web sites selling the Complainant’s counterfeit products. The Respondent also refused to voluntarily transfer the Disputed Domain Name because the Disputed Domain Name generates high revenue from click-through referrals.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”

Paragraph 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) summarizes the consensus view of UDRP panels regarding whether a licensee of a trademark has rights in a trademark for the purpose of filing a UDRP case, whereby:

“In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding.[...]”

The Complainant has produced registration certificates of the trademarks herein and a letter from the owner of the trademarks establishing that the Complainant is the exclusive worldwide licensee of the DOLCE & GABBANA and DOLCE & GABBANA THE ONE trademarks and entitled to act in order to recover and register, in the Complainant’s name, Internet domain names. Therefore, the Panel finds that the Complainant has rights in the DOLCE & GABBANA and DOLCE & GABBANA THE ONE trademarks sufficient for purposes of paragraph 4(a)(i) of the Policy.

The Disputed Domain Name <dolceandgabbanatheone.com> incorporates the distinctive portion of DOLCE & GABBANA and DOLCE & GABBANA THE ONE trademarks. The substitution of the word “and” for the ampersand does not in any way negate the confusing similarity between the Disputed Domain Name and the Complainant’s trademarks, since they convey the same meaning. This type of deliberate typo is not sufficient to distinguish the Disputed Domain Name from the Complainant’s trademarks (Ebay Inc. v. Wangming, WIPO Case No. D2006-1107). The DOLCE & GABBANA and DOLCE & GABBANA THE ONE elements are still immediately recognizable as the Complainant’s trademark.

As for the applicable top-level suffix such as “.com” in the Disputed Domain Name, it is a consensus view that it may usually be disregarded under the confusing similarity test (MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; also see paragraph 1.2 of the WIPO Overview 2.0).

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states:

“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

Paragraph 2.6 of WIPO Overview 2.0 summarizes the consensus view of UDRP panels regarding whether parking and landing pages generate rights or legitimate interests in the disputed domain name, whereby: “[…] By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”

The Complainant has established that it is the exclusive worldwide licensee of the DOLCE & GABBANA and DOLCE & GABBANA THE ONE trademarks. It further claims that the Respondent is not authorized, licensed or otherwise allowed by the Complainant or the trademark owner to use the DOLCE & GABBANA or DOLCE & GABBANA THE ONE trademarks or to register the Disputed Domain Name.

The Disputed Domain Name is used for a parking site generating sponsored search results in association with the DOLCE & GABBANA THE ONE trademark. The Respondent is obviously exploiting the goodwill of the Complainant’s trademark to mislead the consumers to the web site under the Disputed Domain Name for commercial gain.

Furthermore, “Dolce” and “Gabbana” are Italian family names. According to the WhoIs database, the name of the Respondent has no connection to these names. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the names “Dolce” or “Gabbana”.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent did not provide any allegation or evidence indicating that it has rights or legitimate interests in the Disputed Domain Name and there is therefore no evidence in the case file to suggest that the Respondent has rights or legitimate interests in the Disputed Domain Name under any conditions of paragraph 4(c) of the Policy.

Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the respondent has] registered or [it has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name[.]”

[…]

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

The Complainant’s trademarks have been registered in many countries in the world and were well known in many countries prior to the date the Disputed Domain Name was registered in 2013. The Respondent chose the DOLCE & GABBANA THE ONE trademark as the only distinctive part of the Disputed Domain Name. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the “dolceandgabbanatheone” string to register the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademark. Such intentional registration shows the bad faith on the part of the Respondent. The Panel finds that the Disputed Domain Name has been registered in bad faith.

According to the correspondence in Annex 14 to the Complaint, the counsel for the Complainant has attempted to purchase the Disputed Domain Name from the Respondent. The Respondent replied that it will depend on how much the counsel offers for the Disputed Domain Name. The Complainant’s counsel offered from EUR 300 to EUR 1000, but the Respondent rejected this offer. The Respondent was given official notification of the Complaint and the opportunity to respond. The Respondent did not submit any evidence that its documented out-of-pocket costs directly related to the Disputed Domain Name is higher than EUR 1000. As the Respondent rejected the offer on the grounds that the offer was not profitable, the Panel finds that the Respondent registered the Disputed Domain Name for the purpose of selling it to the owner or licensee of the DOLCE & GABBANA THE ONE trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.

The Disputed Domain Name resolves to a parking site with automatic generated sponsored links. These links are directly associated with the DOLCE & GABBANA THE ONE trademark. The Respondent obtains commercial revenue by attracting Internet users to click those sponsored links. Therefore, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion. Therefore, the Panel finds that the Disputed Domain Name is being used in bad faith.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

7. Decision

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 <dolceandgabbanatheone.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: August 13, 2013