WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Calzedonia S.p.A. v. Arda Sengoz / Registration Private, Domains By Proxy, LLC
Case No. D2016-1060
1. The Parties
The Complainant is Calzedonia S.p.A. of Dossobuono, Italy, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Arda Sengoz of Istanbul, Turkey / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <calzedonia.online> 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 May 27, 2016. On May 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 31, 2016 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 amendment to the Complaint on June 2, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2016.
The Center appointed Mihaela Maravela as the sole panelist in this matter on July 7, 2016. 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 the owner of many national and international trademark registrations and applications for CALZEDONIA for inter alia underwear, bathing suits and nightwear in a wide range of countries around the world.
The Complainant owns registered CALZEDONIA marks dating to at least April 3, 2002.
The disputed domain name was registered on February 22, 2016 and at the date of the decision by this Panel it automatically redirects to a competitor’s website “www.victoriassecret.com”.
5. Procedural matters
Before analyzing the merits of the case, the Panel will first consider certain email correspondence that the parties provided to the Center after Panel appointment. As such, the Respondent answered to the notification of panel appointment saying that “You can take all rights of domain. I am not able to attend this case”. Further to receiving such email, the Complainant asked if there is a way to move straight to the safe transfer of the disputed domain name through the Registrar since the owner of the disputed domain name already “agrees to the requested outcome of the proceedings”.
This Panel considers that the above correspondence from the Respondent might be construed in the sense that the Respondent does not wish to contest the Complaint but it does not represent a genuine consent to transfer the disputed domain name. Having this in mind and also having regard to all circumstances of the case, particularly the aspects considered under paragraph 7 C below the Panel will proceed to analyze the case on the merits.
6. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the Complainant’s trademark CALZEDONIA, which is a very specific term that has no descriptive meaning. The Complainant also contends that CALZEDONIA is widely-known in many countries worldwide and embodies substantial goodwill.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that to the best knowledge of the Complainant the Respondent does not own any rights to CALZEDONIA either as a trademark or as a trade name. No consent has been given by the Complainant to the Respondent to use the trademark CALZEDONIA in the disputed domain name, nor for any other purpose. There is no commercial link between the Complainant and the Respondent. Moreover, the Complainant contends that on May 27, 2016 the disputed domain name directly linked to another website “www.victoriassecret.com” which is also instantly shown in the address bar of the browser. The Respondent therefore only uses the disputed domain name to redirect to another company’s web shop and does so without consent by the Complainant or any other rights to CALZEDONIA. The Complainant concludes that the Oki Data criteria are not met in this case.
Moreover, the Complainant contends that the disputed domain name was registered and is being used in bad faith since the disputed domain name redirects to a website belonging to a direct competitor of Complainant. The Complainant argues that considering the extent of registrations by the Complainant, the exact identity of the domain name and the trademark of the Complainant and the nature of the website that the disputed domain name redirects to, it is clear that the Respondent has knowledge of the trademarks of Complainant. Further to a cease-and-desist-letter from the Complainant the Respondent claimed to have a total of 21 domain names for sale and requested no less than USD 250,000. After the Complainant offered to cover the out-of-pocket costs directly related to the disputed domain name, the Respondent claimed/implied that a famous lingerie company offered USD 50,000 and that the Respondent was going to accept this offer.
The Respondent did not reply to the Complainant’s contentions. However, in response to the notification of Panel appointment the Respondent sent an email communication stating that: “You can take all rights of domain. I am not able to attend this case.”
7. Discussion and Findings
Noting the fact that the Respondent has not filed a substantive Response, the Panel shall consider the issues present in the case based on the statements and documents submitted to the Panel by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of 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
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Here, the Complainant has demonstrated inter alia its ownership of European Union trademark CALZEDONIA registered under No. 001874452 as of April 3, 2002, of the International Trademark CALZEDONIA registered under No. 1180100 as of August 5, 2013 and of the International Trademark registered under No. 1047298 as of July 12, 2010. The Complainant’s trademark rights predate the registration of the disputed domain name (February 22, 2016).
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademark. Here, the disputed domain name <calzedonia.online> incorporates entirely the Complainant’s trademark CALZEDONIA. It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.online”, is typically ignored when assessing identity or confusing similarity between a trademark and a domain name (see Sportsdirect.com Retail Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Anwar Rehman, WIPO Case No. D2016-0926; Novartis AG v. Hoang Le, WIPO Case No. D2016-0552; Verizon Trademark Services LLC v. Zhang DongYi, WIPO Case No. D2016-0528).
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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 of WIPO Panel Views on Selected UDRP Questions, Second Edition (“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 […]”.
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. The Complainant has established that it is the owner of the CALZEDONIA trademark and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the CALZEDONIA trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “Calzedonia” (see for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957).
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910.
Further, as discussed in section C below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
The fact that the disputed domain name is confusingly similar with the Complainant’s trademark CALZEDONIA and that the said trademark has been used for a long period of time indicates not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant’s services. Other UDRP panels have held that CALZEDONIA is a well-known trademark (see Calzedonia S.p.A v. N/A Svetlana Petrova / Whois Privacy Services provided by Domainprotect, WIPO Case No. D2012-0522) and given the trademark CALZEDONIA’s recognition and positioning the Respondent must have known the trademark CALZEDONIA at the time the disputed domain name was registered (see Calzedonia S.p.A. v. Max M. Lind, WIPO Case No. D2013-2218).
The Respondent provided no explanations for why he registered the disputed domain name.
As regards the use of the disputed domain name, the Complainant adduced evidence that the disputed domain name automatically redirects users to the website of competitor, Victoria’s Secret. As held by other panels this is evidence of bad faith use (see Zumiez Inc. v. Richard Jones, WIPO Case No. D2007-0024 where it was held that: “Use of the <zoomies.com> domain name is clearly intended to attract would-be purchasers of ZUMIEZ products to the websites of competitors by creating a likelihood of confusion with the ZUMIEZ (pronounced, “zoomies”) trademark as to the source, sponsorship, affiliation or endorsement of the “www.zoomies.com” website.”; see also United Air Specialists, Inc. v. Patricia Pleshe, WIPO Case No. D2005-0640; Momondo A/S v. Arsen Loryan, WIPO Case No. D2015-0235).
Moreover, the Respondent offered to sell the disputed domain name together with other domain names it holds (in total 21 domains) for an amount of USD 250,000. When the Complainant offered for the disputed domain name an amount not exceeding EUR 250, the Respondent argued that it received another offer in amount of USD 50,000 from an allegedly famous lingerie company and it will accept it. Alternatively, the Respondent seems to have offered the disputed domain name to the Complainant for an amount of EUR 2,500.
This is bad faith registration and use under paragraph 4(b)(i) of the Policy according to which a registrant has registered and is using a domain name in bad faith where:
“(i) [there are] circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name;” The same opinion was expressed in Aktiebolaget Electrolux v. Li Bing Yu, WIPO Case No. D2012-1106; ENDEMOL Entertainment UK Plc v. Guido SCHERPENHUYZEN, WIPO Case No. DTV2001-0023; Groupe Mutuel v. Al Perkins, WIPO Case No. D2013-1606.
The Respondent registered the disputed domain name using a privacy service. As held by other UDRP panels “While this is not, of itself, indicative of bad faith, the use of a privacy service to shield the Respondent’s identity can further support an inference of bad faith where there is evidence of other improper behaviour on the part of the Respondent.” Bryant Tyson v. Fundacion Private Whois/ Domain IP Holding Corp., WIPO Case No. D2013-0529.
In the Panel’s view these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel ascertains that the disputed domain name was registered and is being used in bad faith.
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, <calzedonia.online> be transferred to the Complainant.
Date: July 21, 2016