WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dolce & Gabbana S.r.l. v. Yang
Case No. D2013-1763
1. The Parties
The Complainant is Dolce & Gabbana S.r.l. of Milano, Italy, represented by Studio Turini, Italy.
The Respondent is Yang of Beijing, China.
2. The Domain Name and Registrar
The disputed domain names <dolcegabbanahomme.com> and <dolcegabbanamode.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2013. On October 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 14, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 18, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 22, 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 the Respondent of the Complaint, and the proceedings commenced on October 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2013.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on November 22, 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 Dolce & Gabbana s.r.l., an Italian company established since the 1980’s in the fashion business. Since the beginning of its operations the Complainant does business under the trademark and name DOLCE & GABBANA, which is the combination of the last names of the two founders of the company, fashion sylists Domenico DOLCE and Stefano GABBANA.
The trademark DOLCE & GABBANA is the object of several registrations throughout the world, as is stated in the copies attached as Annexes 3.1 to 12 of the Complaint. The Complainant is the exclusive licensee of these marks. DOLCE & GABBANA is also the Complainant’s trade name.
The evidence presented shows that the trademark DOLCE & GABBANA is original and distinctive. Besides, it has gathered awareness throughout the world and can be considered a well-known trademark, according to the provisions of article 6 bis of the Paris Convention.
The disputed domain names were registered by the Respondent on October 11, 2013.
5. Parties’ Contentions
The Complainant contends that the disputed domain names <dolcegabbanamode.com> and <dolcegabbanahomme.com> contain the well-known trademark DOLCE & GABBANA.
The Complainant has obtained registrations for the trademark DOLCE & GABBANA throughout the world, as well as a domain name formed by this mark, namely <dolcegabbana.com>, which is used for the Complainant’s main website.
The Complainant also states that by adding words of common use to the fashion business – “homme” and “mode” – to the trademark in the disputed domain names, the Respondent was clearly trying to lead to confusion associated with their trademark DOLCE & GABBANA.
The Complainant claims never having licensed or authorized the Respondent to use its mark or to apply it for any kind of domain name.
The Complainant also states that the Respondent is not making a legitimate use of the disputed domain names. On the contrary, the disputed domain names were originally associated with counterfeit goods, offered for sale through the Respondent’s websites, as evidenced in Annexes 13A and 13B of the Complaint.
The Complainant also states that the goods offered on the website to which the disputed domain names lead are unauthorized copies of actual DOLCE & GABBANA goods.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, in paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
(i.) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii.) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii.) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark DOLCE & GABBANA, which is registered in several countries and clearly used regularly throughout the world.
Further, the Panel finds that the disputed domain names <dolcegabbanamode.com> and <dolcegabbanahomme.com> are confusingly similar to the trademark belonging to the Complainant, since this mark is entirely reproduced in the disputed domain names.
Moreover, the disputed domain names incorporate entirely the mark DOLCE & GABBANA, merely adding the words “homme” or “mode”, which are clearly linked to the retail fashion business. As further discussed below, this fact can be considered as an attempt to confuse consumers.
Hence, the Panel concludes that the first of the elements in the Policy has been satisfied by the Complainant.
B. Rights or Legitimate Interests
Given the clear evidence that the DOLCE & GABBANA trademark is widely known, the fact that the goods under this mark are sold throughout the world and considering that the Complainant has never licensed or authorized the Respondent to use its mark, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent has not rebutted the Complainant’s contentions.
Hence, the Panel finds that the Respondent cannot claim to have been using the trademark without knowing the Complainant’s rights to it. Besides, as is shown in Annexes 13A and 13B of the Complaint, when active, the disputed domain names lead to webpages that appeared to offer counterfeit copies of the Complainant’s goods, apparently sold by the Respondent. The Panel further notes that the webpages do not disclose the Respondent’s (lack of a) relationship with the Complainant. This shows that the Respondent’s interests in the disputed domain names cannot have been legitimate.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
It is the Panel’s opinion that the Respondent has registered the disputed domain names <dolcegabbanamode.com> and <dolcegabbanahomme.com> with the purpose of taking advantage of the renown of the Complainant’s mark. The fact that the words “homme” and “mode” are commonly used in the fashion business to identify the goods and the business itself supports this supposition.
Further, the Respondent is using the disputed domain names for websites where various counterfeited products bearing the Complainant’s mark are offered for sale, in a clear act of bad faith. The Respondent appears to be doing so for the purpose of commercial gain, arising from the probable confusion of the disputed domain names with the Complainant and its mark.
The Panel finds that, for the reasons mentioned above, the Respondent registered and is using the disputed domain names in bad faith.
The Panel, hence, finds that the third element is satisfied.
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 names <dolcegabbanahomme.com> and <dolcegabbanamode.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: December 13, 2013.