WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Diego Della Valle v. Mr. Stanley Filoramo
Case No. D2003-0941
1. The Parties
The Complainant is Mr. Diego Della Valle, of Sant�Elpidio a Mare, Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Mr. Stanley Filoramo, of Montréal, Canada.
2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2003. On November 27, 2003, and December 1, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On December 1, 2003, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 December 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on December 29, 2003.
The Center appointed Brigitte Joppich as the Sole Panelist in this matter on January 6, 2004. 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 internationally famous fashion stylist and businessman. He is also famous in the sport community as the owner of Fiorentina, one of the oldest Italian football (soccer) teams. Numerous trademarks including the term DIEGO DELLA VALLE are owned by Calzaturificio Della Valle D. S.p.A., i.e.
Mark
Country
Registration No.
DIEGO DELLA VALLE & design
Germany, Benelux, France, Switzerland
467 855
DIEGO DELLA VALLE & design
Germany, Austria, Benelux, Spain, France, Monaco, Switzerland
535 787
DIEGO DELLA VALLE COUTURE & design
Germany, Austria, Benelux, France, Monaco, Portugal, Switzerland
560 969
DIEGO DELLA VALLE & design
Germany, Austria, Benelux, Bulgaria, China, Spain, Russian Federation, France, Hungary, Monaco, Poland, Portugal, Romania, Switzerland, Czech Republic, Yugoslavia
592 375
S.p.A. is the Italian abbreviation of "Società per azioni," the equivalent of a public limited company.
5. Parties� Contentions
A. Complainant
The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case, i.e.
(i) the Domain Name is confusingly similar to the trademark DIEGO DELLA VALLE, and to the personal name and surname of the Complainant, a well-known fashion stylist and businessman;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name:
- there is no evidence of Respondent�s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; the Respondent only offers pornographic images for a fee through his website;
- the Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name DIEGO DELLA VALLE;
- the Respondent is not making a legitimate non-commercial or fair use of the Domain Name as he is using the Domain Name for commercial gain.
(iii) the Domain Name was registered and is being used by the Respondent in bad faith:
- the Respondent, an individual with its residence in North America, where the Complainant has a significant market for fashion products, must have been aware of the well-known trademark DIEGO DELLA VALLE and therefore, the registration of the Domain Name may only have occurred in bad faith;
- the Respondent has specialized in registering domain names corresponding to famous European trademarks, for example , , , , and , this is additional evidence of bad faith registration as well as bad faith use;
- the default page of "www." resolves in a pornographic page, selling (against remuneration) images of oral sex; the Respondent attracts, for commercial gain, customers to his website, who were originally not looking for an adult sex site;
- the consequences of the Respondent�s use of the Domain Name for the Complainant, as a prestigious fashion stylist, are potentially catastrophic, should even a minority of Internet users come to the belief that the Complainant is actually associated with the sale of such kind of pornography; such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent;
- the Respondent�s use of the Domain Name, i.e. redirection to pornographic sites from a domain name incorporating the trademark of another company is, per se, evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a) the Complainant must prove that each of the following three elements are present:
(i) the Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant refers to rights arising from trademarks and from his personal name and surname as a businessman. Common law rights have been found sufficient for the purposes of a complaint under the UDRP in a number of cases (see e.g. Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299; Philip Berber v. Karl Flanagan and KP Enterprises, WIPO Case No. D2000-0661; and Israel Harold Asper v. Communication X Inc. WIPO Case No. D2001-0540). The Panel finds that in this case the Complainant can rely on common law rights as his name DIEGO DELLA VALLE is famous in connection with fashion, as the Complainant himself has a significant reputation as a fashion stylist and as he is using his name commercially.
The domain name is identical to the personal name of the Complainant as the global top level domain name identification has no distinctive function.
The Complainant has therefore satisfied the requirements of the Policy, paragraph 4(a)(i). There is no need to decide whether the Complainant can also rely on the above-mentioned trademarks which are owned by the company Calzaturificio Della Valle D. S.p.A. in this context.
B. Rights or Legitimate Interests
The Policy, paragraph 4(c) sets out three illustrative circumstances as examples, which, if proved by the Respondent, shall demonstrate his rights to or legitimate interests in the Domain Name for purposes of the Policy, paragraph 4(a)(ii), i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademarks or service marks at issue.
The Respondent has not proved any of the above-mentioned circumstances. To the Panel�s knowledge, the Domain Name can neither be derived from the Respondent�s personal name nor the name or the nature of a business operated by him, nor is the Respondent commonly known by the Domain Name, which has apparently neither been used in connection with a bona fide offering of goods or services nor in any legitimate non-commercial or fair context. The Panel therefore sees no rights of the Respondent to or legitimate interests in the Domain Name and finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) sets out four illustrative circumstances, which for purposes of the Policy, paragraph 4(a)(iii) shall be evidence of the registration and use of the Domain Name in bad faith, including:
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that he engaged in a pattern of such conduct; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location.
As the Respondent has registered numerous domain names identical to or confusingly similar with well-known European trademarks or names from famous businessmen, the Panel finds this to be evidence that the Respondent must have been aware of the Complainant�s name when he registered the Domain Name. Therefore, the Panel finds that the Domain Name was registered in bad faith.
For the same reason (i.e. registration of numerous domain names identical to or confusingly similar with well-known European trademarks or names) the Respondent prevents the owners of the corresponding trademarks or names from reflecting their marks in these domain names. This, in the Panel�s view, is evidence that the Respondent engages in a pattern of such conduct under the Policy, paragraph 4(b)(ii) and therefore uses the Domain Name in bad faith.
The Domain Name is also used to divert traffic intended for the Complainant�s website to a pornographic website. The Respondent attempts to attract Internet users to his website by creating a likelihood of confusion with Complainant�s name. As the services under the Domain Name are offered against remuneration only, the Panel assumes that this attempt was made for commercial gain, as set out in the Policy, paragraph 4(b)(iv). Additionally, such use of the Domain Name associated with products from a well-known fashion stylist tarnishes the distinctiveness and reputation of Complainant�s name. These circumstances reveal, again, bad faith usage of the Domain Name by the Respondent.
Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(iii).
7. Decision
For all the foregoing reasons, in accordance with the Policy, paragraph 4(i) and the Rules, paragraph 15, the Panel orders that the Domain Name be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: January 13, 2004
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