WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Peuterey Group S.p.A v. Elizabeth Wilson
Case No. D2014-0579
1. The Parties
The Complainant is Peuterey Group S.p.A, Italy, represented by Studio Legale Lusini & Tognato, Italy.
The Respondent is Elizabeth Wilson, Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <peutereyjacketsshop.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 9, 2014. On April 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 16, 2014.
The Center verified that the Complaint together with the amendment to 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 April 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 8, 2014.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on May 23, 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.
4. Factual Background
The Complainant is an international Italian fashion house that produces markets and sells clothing articles and accessories under the trademark PEUTEREY at least since 1997.
The international renown of the trademark PEUTEREY was duly produced by the Complainant, as well as proof of the registrations owned throughout the world for this mark. In fact, the PEUTEREY trademark is undoubtedly well-known throughout the world.
The products bearing the Complainant's trademark PEUTEREY can be found in stores all over the world, including in China, the country where the Respondent is allegedly based.
The Complainant owns registrations for the PEUTEREY mark in a great number of countries, as states Annex 7 of the Complaint.
According to the Registrar's verification response, the disputed domain name was registered by the Respondent on November 24, 2013.
The disputed domain name, as at the date of this decision, leads to a website selling several different models of clothing articles, all bearing the PEUTEREY brand. In fact, the website presents itself as an original PEUTEREY web store.
5. Parties' Contentions
The Complainant contends that the disputed domain name <peutereyjacketsshop.com> bears the famous trademark PEUTEREY, associated with the words "jacket" and "shop", in a clear attempt to create confusion and mislead the consumers.
The Complainant claims not to have any relationship with the Respondent or has never given the Respondent permission to use its mark or to apply it to any kind of domain name incorporating this mark.
The Complainant also states that the products offered on the website to which the disputed domain name leads are most probably counterfeit. Even if some are not it is a fact that the Respondent suggests the web site to be an official one belonging to the Complainant, with all fake indications of that being depicted in the site.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In this Panel's view, the Complainant has satisfied the requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to the Complainant's trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in 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
Regarding the first element of the Policy, the Panel finds that the Complainant's evidence suffices to proof its rights in the PEUTEREY mark which is duly registered in several countries.
The Complainant also produced evidence of the worldwide renown of the PEUTEREY trademark, which has been in the market since 1997.
Further, the Panel finds that the disputed domain name, <peutereyjacketsshop.com>, reproduces the mark in its entirety and furthermore, the addition of the words "jackets" and "shop" which is in this Panel's view a clear attempt to deviate the market for the original PEUTEREY mark, intentionally leading the consumers to confusion.
Hence, the Panel finds that the first element is present in this case.
B. Rights or Legitimate Interests
The Panel finds that the mark PEUTEREY is undoubtedly linked to the Complainant, since it is not only registered as a mark in its name in a large number of countries, but also is used to identify the Complainant's business and the related goods.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent is not in any way linked to the Complainant nor has ever been authorized to market under the Complainant's trademark. Further there is no disclaimer or information in the website clarifying the relationship with the Respondent, which can mislead possible customers.
Besides, the Complainant provided evidence of the renown of the mark. Hence, the Panel finds that the Respondent should have been aware of the mark and its direct relation to the Complainant.
Thus, 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 contends that the Respondent has registered and is using the disputed domain name in bad faith, under paragraph 4(b) of the Policy.
The Complainant's trademark PEUTEREY is recognized as being a widely-known trademark. In this Panel's view, the Respondent was aware of the Complainant's rights in this mark at the time the disputed domain name was registered, due to the notoriety.
The website to which the disputed domain name leads also bears the mark PEUTEREY in the special script which is also registered under the Complainant's name. Further, the website offers a multitude of clothing articles as if they were PEUTEREY goods. The website in fact is constructed to look like belonging to the Complainant or at least doing business under the Complainant's authorization, which was proven not to be true.
Based on the above evidence, the Panel finds that the Respondent registered and is using the disputed domain name with the intention of attracting for commercial gain, Internet users to its website by creating a likelihood of confusing with the Complainant's trademark.
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, <peutereyjacketsshop.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: June 12, 2014