WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Etro S.p.A. v. Carmela Kern
Case No. D2013-1435
1. The Parties
The Complainant is Etro S.p.A. of Milan, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Carmela Kern of Fort Lee, New Jersey, United States of America (the “USA”).
2. The Domain Name and Registrar
The disputed domain name <etro-online.com> (the “Domain Name”) is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2013. On August 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 16, 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 August 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2013. The Center received on August 26, 27 and 29, 2013 informal communications from an individual with the same name of the Respondent.
The Center appointed Nicholas Smith as the sole panelist in this matter on September 18, 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 is a fashion company based out of Milan, Italy. It specialises in fabric and leather goods, including a line of designer handbags.
Since 1968 the Complainant has promoted itself and its products under the trade mark ETRO (the “ETRO Mark”). The Complainant has registered the ETRO Mark in numerous countries throughout the world since 1984, including the United States, where the named Respondent is based.
The Domain Name <etro-online.com> was created on May 15, 2013. It currently re-directs to a website (“Respondent’s Website”) that appears to offer handbags branded with the ETRO Mark. According to the Complainant, such offerings are counterfeit products.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s ETRO Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ETRO Mark. It holds several registrations for the ETRO Mark around the world. The ETRO Mark is used by the Complainant for its fashion products. The Complainant has also registered a number of domain names that incorporate the ETRO Mark, including <etro.com>, <etro.net>, <etro.eu> and <etro.us>.
The Domain Name consists of the ETRO Mark in its entirety with the addition of the generic term “online”. There are numerous UDRP panel decisions that find that the addition of a generic term such as “online” to a trade mark does not change a finding of confusing similarity.
The Respondent is not commonly known by the Domain Name nor has it conducted a legitimate business under the Domain Name. The Complainant has not authorized or licensed the Respondent to use the ETRO Mark. There is no non-commercial use of the Domain Name.
Given the reputation of the Complainant’s well-known ETRO Mark, it is inconceivable that the Respondent registered the Domain Name unaware of the Complainant’s rights. The Domain Name revolves to a website which appears to sell handbags branded with the ETRO Mark. The Complainant does not authorise the sale of its products through unofficial online shop. Rather the handbags for sale at the Respondent’s Website are counterfeit products. The fact that the Respondent’s Website makes a reference to the Complainant’s business leads to the conclusion that the Domain Name was registered with regard to the Complainant and is being used in bad faith by the Respondent.
The Respondent is using its websites to attract Internet users to sell counterfeit products. The Respondent has registered the Domain Name, without the authorisation or approval of the Complainant, in order to profit by attracting users to the Respondent’s Website. This conduct amounts to registration and use of the Domain Name in bad faith.
The Center received three email communications from Carmela Kern, the named Respondent. Each of these communications strongly denied that Ms. Kern owned any domain names and expressed confusion as to why she was involved in these proceedings.
6. Discussion and Findings
In this proceeding the named Respondent has written to the Center, strongly denying that she is the owner of the Domain Name or has any connection with the Domain Name. Similar situations have arisen in Banca Intesa S.p.A. v. Hilary Ammann, WIPO Case No. D2006-0496 and AXA SA v. Michael A Watters, WIPO Case No. D2012-0376 in which the persons apparently in control of the disputed domain names illegally used the then respondents’ respective names and addresses to register the disputed domain names.
While it is possible that the Domain Name was registered by a third party using Ms. Kern’s identity without her knowledge or authorization, the Rules state that the respondent in a UDRP proceeding is the holder of the domain name registration (against which a complaint is filed). In this proceeding, the holder of the Domain Name, according to the information transmitted by the Registrar on August 16, 2013 is Carmela Kern and therefore, pursuant to the Rules and the Policy, she is the proper Respondent in the proceeding. The Panel acknowledges that Ms. Kern may have been the victim of some form of scam or identity theft and may not be in control of the Domain Name, but makes no factual finding in that respect.
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the ETRO Mark, having registrations for ETRO as a trade mark throughout the world, including in the United States since 1984, where the named Respondent is based.
UDRP panels “have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant.” Bank of Nova Scotia v. Whois Protection, WIPO Case No. D2007-0884. See also Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc., WIPO Case No. D2011-1227.
The Domain Name consists of the ETRO Mark and the suffix “online”. This suffix “online” does not operate to distinguish the Domain Name from the ETRO Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s ETRO Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))”.
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ETRO Mark or a mark similar to the ETRO Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather, the named Respondent, in her communications, denied having any connection to the Domain Name whatsoever.
The Domain Name links to the Respondent’s Website, which, without the permission of the Complainant:
(a) makes reference to the Complainant’s ETRO Mark, potentially indicating that the Respondent (or at least the operator of the websites) is in some way connected with the Complainant or offers its products; and
(b) offers products that appear on the face of it to be counterfeit ETRO products.
Such use is not a bona fide offering of goods or services. The sale of counterfeit goods from a domain name that incorporates the mark used for genuine goods to which the counterfeits correspond does not provide a legitimate interest in that domain name, see Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi Zhou, Fujian Anfu, WIPO Case No. D2012-0888.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The named Respondent has not suggested otherwise. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), 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 has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 the Respondent’s website or location or of a product or service on the Respondent’s web site or location.
The Panel finds that the entity that registered the Domain Name, be it the named Respondent or an unknown third party who has used the named Respondent’s identity without her permission, knew of the existence of the Complainant at the time the Domain Name was registered. The Domain Name resolves to a website that, at the time of the Complaint, displayed the ETRO Mark with reference to designer handbags which is part of the Complainant’s business. The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own is registration in bad faith.
The Respondent is using the Domain Name to intentionally attempt 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 its website. The Respondent has used the Domain Name to operate a website that sells what appear to be counterfeit ETRO goods. It therefore is likely to receive revenue from Internet users who happen to come across the Respondent’s Website by means of confusion with the ETRO Mark and then purchase counterfeit ETRO products.
Furthermore, it appears that the entity in control of the Domain Name has illegally used Ms. Kern’s name and address to register the Domain Name. A deliberate concealment of identity and contact information may in itself indicate bad faith. See TTT Moneycorp Limited. v. Diverse Communications, WIPO Case No. D2001-0725.
For the reasons set out above, the Panel also finds that the Respondent has used the Domain Name in bad faith. Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name <etro-online.com> be transferred to the Complainant.
Date: September 23, 2013