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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Levitas S.p.A. v. Paige Pierce

Case No. D2019-3147

1. The Parties

The Complainant is Levitas S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy.

The Respondent is Paige Pierce, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <bikkembergss.com> (the “Domain Name”) 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 December 19, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 20, 2019, 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 January 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2020.

The Center appointed Dawn Osborne as the sole panelist in this matter on February 6, 2020. 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, inter alia, the word mark BIKKEMBERGS registered in Italy registration no. 1513661 for apparel since 2012 and the word mark DIRK BIKKEMBERGS registered, inter alia, in the United States registration no. 1539400 for apparel since 1989. The DIRK BIKKEMBERGS logo is also registered, inter alia, as a European Union Trade Mark no. 629386 since 1999. The Complainant owns the domain name <bikkembergs.com>.

The Domain Name registered on September 20, 2018 has been used for a site offering the Complainant’s goods which suggests it is an official site of the Complainant by use of the Complainant’s DIRK BIKKEMBERGS logo as a masthead and a misleading copyright notice “© 2019 BIKKEMBERGS Outlet Online Store. All Rights Reserved.”.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarised as follows:

The Complainant is the owner of, inter alia, the word mark BIKKEMBERGS registered in Italy registration no. 1513661 for apparel since 2012 and the word mark DIRK BIKKEMBERGS registered, inter alia, in the United States registration no. 1539400 for apparel since 1989. The DIRK BIKKEMBERGS logo is also registered, inter alia, as a European Union Trade Mark no. 629386 since 1999. The Complainant owns the domain name <bikkembergs.com>.

The Domain Name is confusingly similar to the Complainant’s mark adding only an extra letter “s” at the end of the Complainant’s mark (which does not change the way the name is pronounced) and the generic Top-Level Domain (“gTLD”) “.com” which does not prevent confusing similarity between the Domain Name and the Complainant’s mark.

The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by the Domain Name, and is not authorised by the Complainant.

The Domain Name has been used to point to a site offering goods using the Complainant’s DIRK BIKKEMBERGS logo as a masthead and collecting customer information. The site bears the notice “© 2019 BIKKEMBERGS Outlet Online Store. All Rights Reserved.” The use of the Complainant’s mark and logo as a masthead is likely to confuse Internet users that the site is official and disrupt the Complainant’s business and, is not a bona fide offering of goods or services or a legitimate fair use. It is registration and use in bad faith. The reference to the Complainant’s goods shows that the Respondent is aware of the Complainant, its rights, business, and goods.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Domain Name consists of the Complainant’s BIKKEMBERGS mark (registered, inter alia, in Italy for apparel since 2012), the additional letter “s” and the gTLD “.com”. Previous UDRP panels have found that adding one letter to the end of a registered mark does not prevent confusing similarity between the Domain Name and the Complainant’s mark.

The gTLD “.com” does not prevent confusing similarity between the Domain Name and the BIKKEMBERGS mark which is the distinctive component of the Domain Name.

Accordingly, the Panel holds that the Domain Name is confusingly similar to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has not authorised the use of any of its registered marks. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name.

The website attached to the Domain Name uses the Complainant’s DIRK BIKKEMBERGS logo as a masthead and the copyright notice “© 2019 BIKKEMBERGS Outlet Online Store. All Rights Reserved.”. All uses of the Complainant’s marks on the site are spelled correctly and the use is such that the Respondent’s site could be taken to be an official site of the Complainant. It does not make it clear that there is no commercial connection between the website attached to the Domain Name and the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods or services. The use is commercial and so cannot be legitimate noncommercial or fair use.

Further typosquatting is a further indication of a lack of rights or legitimate interests in domain names.

As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

C. Registered and Used in Bad Faith

In the opinion of the Panel the use made of the Domain Name in relation to the Respondent’s website is confusing and disruptive in that visitors to the website might reasonably believe it is connected to or approved by the Complainant due to the finding that the website attached to the Domain Name uses the Complainant’s DIRK BIKKEMBERGS logo as a masthead and a copyright notice suggesting the website is an official website of the Complainant.

The fact that the website at the Domain Name uses the Complainant’s logo and purports to offer products of the Complainant shows that the Respondent has actual knowledge of the Complainant, its business, rights, and goods.

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the website likely to disrupt the business of the Complainant.

The Domain Name is also highly similar to the Complainant’s official domain name, misspelling BIKKEMBERGS with an extra “s” at the end. Typosquatting is further evidence of bad faith registration and use.

As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.

There is no evidence as to the collection of customer information as alleged by the Complainant and the Panel makes no finding as to the same.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bikkembergss.com> be transferred to the Complainant.

Dawn Osborne
Sole Panelist
Date: February 20, 2020

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