WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Etro S.p.A. v. Trudy Stross
Case No. D2017-0682
1. The Parties
The Complainant is Etro S.p.A. of Milan, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Trudy Stross of Lorain County, Ohio, United States of America ("US").
2. The Domain Name and Registrar
The disputed domain name <etro-clothing.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2017. On April 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 2, 2017.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on May 8, 2017. 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 company in the fashion industry. The trademark ETRO is owned by the Complainant and registered as trademarks. The Complainant owns the international trademark registration no. 610967 dated November 22, 1993 and registration no. 915140, dated November 23, 2006 as well as US registration no. 1408590 dated September 9, 1986, registration no. 1386792 dated March 18, 1986 and registration no. 2147619 dated March 31, 1998.
The Complainant has also registered a number of domain names which include the trademark ETRO.
The Respondent registered the disputed domain name on February 18, 2017. As evidenced in the Complaint, the disputed domain name resolves to a website selling products under the Complainant's ETRO trademark.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is a well-known fashion house which sells its products internationally. The trademark ETRO, which is owned by the Complainant is registered in many parts of the world. The disputed domain name incorporates the trademark ETRO in its entirety, which is sufficient to render it identical or confusingly similar to the Complainant's trademark. The term "clothing" is simply descriptive of the goods.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant never authorized the Respondent the use of the trademark ETRO. The Respondent is not commonly known by the trademark ETRO nor does the disputed domain name correspond to the Respondent's name. There is no fair or noncommercial use of the disputed domain name as it is used for offering goods bearing the trademark ETRO and fails to meet the requirements of the test articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the "Oki Data test"). The Respondent fails to mention that it is not the owner of the trademark ETRO or that it is not affiliated with the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered in bad faith as the trademark ETRO is known worldwide for fashion and the disputed domain name incorporates the term "clothing". The Respondent clearly was aware of the Complainant's trademark. The Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant as the Respondent offers goods bearing the trademark ETRO without disclosing that it is not affiliated with the Complainant. This will lead Internet users to think that the goods offered through the disputed domain name are offered by the Complainant itself.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has submitted a number of trademark registration certificates for the trademark ETRO as well as a list of its trademark registrations throughout the world. The Panel is satisfied that the Complainant has established its ownership of the trademark ETRO.
The disputed domain name comprises the Complainant's trademark ETRO in its entirety combined with the term "-clothing", which does not eliminate the confusing similarity with the trademark ETRO but on the contrary enhances the confusion as it describes the goods associated with the trademark ETRO. The disputed domain name also contains the generic Top-Level Domain ("gTLD") ".com", which should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. The disputed domain name purports to sell Etro products. Even if these products are genuine, the Respondent fails to meet the Oki Data test as the website to which the disputed domain name resolves does not prominently disclose the relationship between the Respondent and the Complainant.
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The element of bad faith is evidenced by the fact that the trademark ETRO is used in connection with clothing and the disputed domain name is used to link to a website offering clothing. Furthermore, the trademark ETRO is well-known in the world of fashion. Hence, it seems evident to the Panel that the Respondent was fully aware of the Complainant and its trademark and has registered and used the disputed domain name comprising the Complainant's mark with the aim of attracting consumers to its website and with the intent of commercial gain, by creating a likelihood of confusion with the Complainant's mark.
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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 disputed domain name <etro-clothing.com> be transferred to the Complainant.
Date: May 11, 2017