WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gianfranco Ferré v. New York Link
Case no. D2001-1375
1. The Parties
The Complainant in this administrative proceeding is Gianfranco Ferré S.p.A., located at Via Pontaccio, 21 - Milan � Italy.
The Respondent is New York Link, Inc., 162 Fifth Avenue, 10th Floor, New York, NY 10010 USA.
2. The Domain Name and Registrar
The domain name in issue is .
The registrar with which the domain name is registered is ABACUS AMERICA, INC. DBA NAMES4EVER.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant�s complaint on November 19, 2001, (electronic version) and November 21, 2001, (hard copy). The Center verified that the complaint satisfies the formal requirements. The registrar verification response was received on December 11, 2001. The notification of the complaint and the administrative proceedings was made on December 19, 2001. The notification of Respondent�s default was issued on January 15, 2001. The Panelist received the file on February 11, 2002.
4. Factual Background
The trademark on which the Complaint is based is GIANFRANCO FERRE. The Complainant Gianfranco Ferré S.p.A. (hereinafter Ferré), a company existing under the laws of Italy and having its principal place of business in Milan, is a company active in the fashion field. Its goods are marketed and promoted in many countries. As a consequence, the trademark, the tradename and the proper name of the designer (Mr. Gianfranco Ferré) are well known throughout the entire world.
The first filing concerning the Gianfranco Ferré trademark in the USA dates back to February 22, 1980. Furthermore, Ferré is the owner of many national, international and European Community registered trademarks.
5. Parties� Contentions
The Complainant contends that the Respondent registered the Domain Name without its consent. In addition, Respondent clearly registered the Domain Name in order to prevent Complainant from reflecting his trademark in a corresponding domain name and to take advantage of this situation by selling or otherwise transferring the Domain Name registration to Complainant or to a competitor for valuable consideration in excess of the domain name registrant�s out-of-pocket costs directly related to the Domain Name.
Consequently, Complainant requires the transfer of the Domain Name registration.
The Respondent has not submitted any response.
6. Discussion and Findings
A. Identical or confusingly similar domain name
The domain name in issue is clearly confusingly similar to the Complainant�s trademarks and tradename. Indeed there is no significant difference between "Gianfranco Ferre" and .
B. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks, nor has Respondent ever been known by this name.
Further, by not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
C. Registration and Use in Bad Faith
Several facts have to be taken into consideration when assessing the absence/presence of bad faith in this matter :
Gianfranco Ferré is a registered trademark of the Complainant. Taking into consideration the fame of the Complainant and the Complainant�s trademarks, it may be reasonably assumed that the Respondent knew of the Complainant and its trademark when he registered the Domain Name. Therefore, when registering the Domain Name, Respondent knowingly chose a name which is identical to the trademark of Complainant, thereby intentionally creating a situation which is at odds with the registered rights of the Complainant.
It is also important to note that the Respondent has registered several domain names related to well-known trademarks such as , , or names of famous persons like . There is evidence from another Domain Name dispute decided by a WIPO Panel (WIPO Case No. D2000-0822 Gaulme SA & Jean-Paul Gaultier SA v. Jeanpaulgaultier Funclub DBA New York Link, October 31, 2000) against this same Respondent that New York Link, Inc. is a company with activities related to filing then trading domain names rather than the bona fide use of them.
Domain name warehousing has been considered as evidence of the registrant�s bad faith in several previous Panel decisions pursuant to the Policy, for example the WIPO Case No. D2000-0022 Parfums Christian Dior v. 1 Netpower, Inc. In addition, as stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, passive holding of the domain name, without use in commerce, may support a holding of use in bad faith.
By not submitting a response, Respondent has failed to invoke any circumstances which could demonstrate that it did neither register, nor use the Domain Name in bad faith.
7. Decision
In light of the foregoing, the Administrative Panel decides that the Domain Name registered by the Respondent is confusingly similar to the trademark of the Complainant, that the Respondent has no right or legitimate interest in respect of the Domain Name, and that the Respondent registered and used the Domain Name in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Name be transferred to Gianfranco Ferré S.p.A.
François Dessemontet
Sole Panelist
Dated: February 11, 2002
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