WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calzedonia S.p.A. v. Max M. Lind
Case No. D2013-2218
1. The Parties
Complainant is Calzedonia S.p.A. of Verona, Italy, represented by Novagraaf Nederland B.V., the Netherlands.
Respondent is Max M. Lind of Lane Kokomo, Indiana, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <calzedoniaonlineshop.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name, and the Registrar transmitted by email to the Center its verification response confirming that 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”).
The Center noticed that the disputed domain name <calzedoniaonlineshop.com> was set to expire on February 20, 2014. Paragraph 220.127.116.11.of the ICANN Expired Domain Deletion Policy provides that: “in the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, Complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant”. Therefore, the Center contacted the Registrar on January 6, 2014 requesting a confirmation that the disputed domain name was going to be placed in Registrar LOCK status, and also, whether any action from the parties was required to keep it locked. Registrar replied on January 7, 2014, confirming that the disputed domain name had been placed in LOCK status and that it could be renewed for the duration of the proceeding to prevent its deletion, thus requested from either Complainant or Respondent the funds for renewal. The Center urged the parties by e-mail dated January 7, 2014, to contact the Registrar and directly arrange the disputed domain name’s renewal as soon as possible. On January 9, 2014 Complainant confirmed to the Registrar that a Name.com account was created and account credit in the amount of USD 11.00 was purchased for the renewal of the disputed domain name <calzedoniaonlineshop.com>. The Registrar confirmed on January 9, 2014 that the disputed domain name <calzedoniaonlineshop.com> was renewed.
In accordance with the Rules, paragraphs 2(a) and 4(a), on January 3, 2014 the Center sent the Complaint and its Annexes to Respondent via e-mail, and also a Written Notice of the Complaint via courier, setting January 23, 2014 as the deadline by which Respondent could file a Response to the Complaint. The courier delivery failed but the electronic copy of the Complaint and its Annexes were successfully delivered to Respondent’s registrar-confirmed email address. However, Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2014.
The Center appointed Fernando Triana, Esq. as the sole panelist in this matter on January 30, 2014. 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 finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules: “to employ reasonably available means calculated to achieve actual notice to Respondent” through electronic submission of the Complaint and its Annexes and the Written Notice of the Complaint via courier, as defined in paragraph 2(a)(i) and 2(a)(ii) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted by Complainant and in accordance with the Policy, the Rules, the Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
4. Factual Background
Complainant is the owner of several registrations of the trademark CALZEDONIA around the world, mainly for clothing, underwear and swimwear. The CALZEDONIA trademark has intensively been used by Complainant worldwide since 1986. Complainant has set up a franchising network and nowadays has more than 1,400 shops in countries such as Spain, Italy, Austria, Greece, France, Lebanon, Mexico, Turkey, etc. Complainant also runs the website “www.calzedonia.it” and owns a number of domain name registrations including the trademark CALZEDONIA. Therefore, the trademark CALZEDONIA is well-known in many countries and embodies substantial goodwill.
5. Parties’ Contentions
1. The trademark CALZEDONIA is registered in a number of countries and used worldwide since 1986.
2. Complainant owns several domain names incorporating the trademark CALZEDONIA.
3. Complainant’s trademark CALZEDONIA is well-known in many countries.
4. The disputed domain name <calzedoniaonlineshop.com> comprises Complainant’s trademark CALZEDONIA and the generic terms “online” and “shop”. The addition of these terms does not suffice to differentiate the disputed domain name from Complainant’s trademark.
5. Respondent has no rights or legitimate interests in respect to the disputed domain name <calzedoniaonlineshop.com>: (i) Respondent does not own trademark rights on the expressions “Calzedonia Online Shop” nor CALZEDONIA; (ii) Respondent has not acquired a reputation in connection to the name “Calzedonia Online Shop” nor “Calzedonia”; (iii) Complainant has not authorized Respondent to use the trademark CALZEDONIA and Respondent is not a franchisee of Complainant and (iv) the disputed domain name <calzedoniaonlineshop.com> reverts to a “parking website” since its registration on February 20, 2013.
6. The disputed domain name <calzedoniaonlineshop.com> is confusingly similar to the trademark CALZEDONIA.
7. The trademark CALZEDONIA was deliberately chosen by Respondent to be part of the disputed domain name due to its well-known character. Respondent is creating a likelihood of confusion with the trademark CALZEDONIA and its reputation so as to attract Complainant’s customers to its website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Likewise, paragraph 10(d) of the Rules, provides that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. The Panel wants to make special emphasis on the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence. The Panel is empowered to confirm this evidence ex officio.
In addition, the Panel will analyze the Respondent’s default within this administrative proceeding in accordance with paragraph 14 of the Rules, which states as follows:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw suchinferences therefrom as it considers appropriate”.
Hence, the Panel will deem Respondent’s failure to respond to the Complaint as a presumption against it, and will accept as sufficient the evidence filed by Complainant (and confirmed ex officio) to prove its claims, since it has not been contested by Respondent.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all (Section A), the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly (Section B), the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly (Section C), the Panel will establish whether or not the disputed domain name have been registered and is being used in bad faith by Respondent.
Section A. Identical or Confusingly Similar
Complainant contends to be the owner of the trademark CALZEDONIA in a multitude of jurisdictions since before the registration of the disputed domain name <calzedoniaonlineshop.com>, that is, before February 20, 2013 (as shown in the WhoIs information of the disputed domain name, provided as Annex 2 to the Complaint).
a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of a trademark or a service mark, the rights to which may be acquired by registration before a competent office in a number of jurisdictions of the world.
The worldwide-accepted definition of a trademark involves the concept of distinctiveness as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
In this case, Complainant proved its rights in the trademark CALZEDONIA. Annex 5 to the Complaint includes:
i) A listing of registrations for the trademark CALZEDONIA granted around the world (including Australia, United Arab Emirates, India, Hong Kong (China), Paraguay, etc.) as from 1996 in international classes 25, 35, 42, etc.
ii) A printout of the OHIM’s website referring to the Community Registration No. 1874452 of the trademark CALZEDONIA in international classes 25 and 35, which dates back to 2002.
iii) Copies of the following registration certificates for the trademark CALZEDONIA granted by:
- Canadian Intellectual Property Office, registration No. TMA592, 175 of October 14, 2003, for clothing articles;
- National Intellectual Property Office of Sri Lanka, registration No. 89030 of August 20, 2008, in international class 25;
- Russian Trademark Office, registration No. 273247 of October 20, 2003, in international classes 25 and 35; and
- Intellectual Property Office of New Zealand, registration No. 259876 of March 13, 2007 in international class 42.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the trademark CALZEDONIA and the exclusive right to use it in connection with the stated goods. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive1.
Thus, Complainant established its rights in the trademark CALZEDONIA.
Therefore, the Panel concludes that Complainant has demonstrated registered rights in the trademark CALZEDONIA for purposes of paragraph 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and Complainant’s trademark
Complainant alleges that the disputed domain name <calzedoniaonlineshop.com> incorporates the trademark CALZEDONIA and the generic terms “online” and “shop”, which makes it similar to the trademark CALZEDONIA.
Before establishing whether or not the disputed domain name <calzedoniaonlineshop.com> is confusingly similar to the Complainant’s trademark CALZEDONIA, the Panel wants to point out that the addition of generic Top-Level Domains (gTLD), i.e., “.net“, “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the domain name is identical or confusingly similar to the registered trademark. Neither the addition of country code Tp-Level Domains (ccTLD), i.e., “.co”, “.de”, “.cr”, “.es”, nor the insertion of a gTLD have a distinctive function.
Previous UDRP panels have unanimously accepted that the inclusion of the “.com” gTLD in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, the Panel stated that “the addition of the generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific enterprise as a source of goods or services”. This conclusion applies also to the “.org” gTLD.
In addition, the Panel agrees with Complainant on the conclusion that including the generic terms “online” and “shop” at the end of the second-level disputed domain name is not sufficient to make it different from the trademark CALZEDONIA. The conjunction of the terms “online” and “shop” simply indicates one of the many commercialization channels appropriate (and obvious) for the kind of products that Complainant produces and commercializes with the trademark CALZEDONIA.
As per this reasoning, the Panel finds that the disputed domain name <calzedoniaonlineshop.com> is confusingly similar to the Complainant’s trademark CALZEDONIA, and thus the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.
Section B: Rights or Legitimate Interests
a) Prima Facie Case
Regarding this second element of paragraph 4(a) of the Policy, previous UDRP panels have unanimously consented that requiring the complainant to prove the lack of rights or legitimate interests of the respondent in a domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the respondent.
In the Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121, the panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4I of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”
Therefore, a complainant is required to make a prima facie case that the respondent lacks of rights or legitimate interests in a domain name. Once this prima facie case is made, the burden of production shifts to the respondent, who must prove those rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have met the second element of paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in respect to the disputed domain name <calzedoniaonlineshop.com> because: (i) Respondent does not own trademark rights over the expressions “Calzedonia Online Shop” nor CALZEDONIA; (ii) Respondent does not have acquired either a reputation in relation to the expressions “Calzedonia Online Shop” or “Calzedonia”; (iii) Complainant has not authorized Respondent to use nor granted a license to Respondent to use the trademark CALZEDONIA; (iv) Respondent was aware of the existence of the trademark CALZEDONIA when it registered the disputed domain name; and (v) the disputed domain name does not revert to a website but to a “parking website” ever since it was registered.
The Panel accepts this assertion as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s Rights or Legitimate Interests in the Disputed Domain Name
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, 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) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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.
Respondent did not file a Response.
The Panel believes that even if Respondent had filed a Response, it could not have proven any rights or legitimate interests in the disputed domain name: the trademark CALZEDONIA is worldly associated with its owner, that is, with Complainant. Respondent is not commonly known by the words “Calzedonia Online Shop”. In addition, Annex 10 to the Complaint shows that the disputed domain name indeed reverts to a parking website, from which, in the Panel’s assessment, Respondent is profiting whereas taking advantage of the trademark CALZEDONIA’s recognition and positioning. The Panel deems this behavior as exactly the opposite of a bona fide offering of goods.
The Panel finds on the record that Respondent lacks rights or legitimate interests in the disputed domain name <calzedoniaonlineshop.com>. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with.
Section C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, 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 the disputed domain name in bad faith:
(1) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(2) Respondent has registered the disputed domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
Complainant asserts that Respondent registered the disputed domain name <calzedoniaonlineshop.com> in bad faith since it was likely to have knowledge of the trademark CALZEDONIA on February 20, 2013.
Complainant mentioned in the Complaint that the trademark CALZEDONIA is well-known. Complainant also annexed certain information to the Complaint (a listing of registered domain names on its behalf, as Annex 7, a printing of its website “www.calzedonia.it” as Annex 8 and reproductions of its winter 2013 catalogue as Annex 9).
The Panel wishes to highlight that a trademark’s alleged well-known character must be proven by the interested party and cannot simply be taken for granted. In this case, the evidence submitted by Complainant is not enough to prove the trademark CALZEDONIA’s well-known character. However, the Panel undertook an ex officio research about Complainant and its trademark CALZEDONIA and concludes that this trademark has indeed a high level of recognition around the world.
Given the trademark CALZEDONIA’s recognition and positioning, the Panel agrees with Complainant: Respondent must have known the trademark CALZEDONIA at the time the disputed domain name was registered. Evidence of such knowledge is the disputed domain name itself: “Calzedonia” is not a word in the English language, which is the language of the links posted on the Respondent’s website. In addition, English is the language spoken in the State of Indiana, US, the location of Respondent’s contact information. Thus, in the Panel’s view, Respondent deliberately took someone else’s trademark, combined with the generic terms “online” and “shop” to register a domain name and to create a business around it. The Panel deems that the mere fact of knowingly using and modifying a third-party’s trademark in a domain name is registration in bad faith. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel held: “The selection of this word is certainly not a random decision: the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
The Panel must highlight that Respondent also must have been aware of Complainant’s business, since the disputed domain name <calzedoniaonlineshop.com> could perfectly be a means for Internet users to find and buy clothes branded with the trademark CALZEDONIA. Thus, in the Panel’s assessment, the inclusion of the trademark CALZEDONIA in the disputed domain name <calzedoniaonlineshop.com> is per se evidence of Respondent’s bad faith.
Additionally, Complainant argues that the disputed domain name is being used in connection to a parking website. Annex 10 to the Complaint includes a printout of the Respondent’s website. Complainant believes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to an online location by creating a likelihood of confusion with the trademark CALZEDONIA.
The Panel concurs. This intention explains the selection of words with which Respondent made its domain name up. In the Panel’s view, Respondent knew that the disputed domain name would attract Internet users to a website from which Respondent expected to make money: they would reach it while looking for information about CALZEDONIA branded goods or while trying to visit an online shop for these goods. As a matter of fact, the Panel ex officio clicked on the links posted on the Respondent’s website to confirm where it was leading Internet users to. Under the cover of a set of instructions aimed to delete the user’s dns cache, the link reverts to a website (“www.capnel.net”) by means of which a software package is made available for website hosts and website owners to manage their servers and websites. According to the website’s link “Plans & Pricing”, purchasing a license of this software may cost as from USD 200 per year. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s trademark.
The Panel believes that “parking websites” do not necessarily entail per se use of a domain name in bad faith. They may be intended to reserve a domain name for future developments, or to prevent cybersquatting. However, the Panel also believes that registering a domain name which comprises someone else’s highly recognized trademark so as to make profit from diverted Internet users is use in bad faith as per Policy, paragraph 4(b)(iv).
Finally, the Panel considers that providing fake contact information when registering a domain name is also indicative of bad faith. Domain name registrants are required to provide accurate and updated contact information. However, this was not the case with Respondent. As shown in this case file, the Written Notice of the Complaint was not delivered to Respondent due to the fact that the listed postal address was incomplete to say the least.
The three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to Respondent of the disputed domain name.
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 <calzedoniaonlineshop.com> be transferred to the Complainant.
Fernando Triana, Esq.
Date: February 13, 2014