WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Daniel Flachaire v. Raffaele Carofiglio
Case No.�D2007-0163
1. The Parties
The Complainant is Daniel Flachaire of Monaco, represented by Patricia Giudice of Nice, France.
The Respondent is Raffaele Carofiglio of Bari, Italy, represented by Dimitri�Russo of Bari, Italy.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows,�Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on February�6,�2007. On February�8,�2007, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On that same day, February�8,�2007, Tucows, 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 and technical contact. The Complainant filed an amendment to the Complaint, i.e. a translation of the Complaint into English, of its own accord on February�20,�2007. 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”), 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 paragraphs�2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March�1,�2007. In accordance with paragraph�5(a) of the Rules, the due date for Response was March�21,�2007. The Response was filed with the Center on March�20,�2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April�2,�2007. 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 paragraph�7 of the Rules.
4. Factual Background
The Complainant is the owner of trademark registrations in many countries worldwide (including Italy) for BANANA MOON TOP WAVE, with a priority as early as 1989, as well as for BANANA MOON, with a priority as early as 1996. The Complainant has licensed the aforementioned marks exclusively to MC Company, which distributes swimming costumes and bathing suits under the name of BANANA MOON.
The Respondent is the owner of various Italian trademark registrations for BANANA MOON, with a priority as early as 1998.
The disputed domain name was registered by the Respondent on July�8,�2003.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph�4(a) of the Policy are given in the present case:
(i) The domain name is confusingly similar to the Complainant’s marks as it reproduces the distinctive combination of the words “banana” and “moon” and only adds the word “store” which is not able to distinguish the disputed domain name from the Complainant’s marks as the domain name is used by the Respondent in connection with a website offering identical and similar goods for sale.
(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name as the Complainant successfully brought cancellation proceedings against the Respondent’s Community trademarks BANANA MOON.
(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith as the Respondent was perfectly well aware of the Complainant’s website when filing the disputed domain name. The Complainant asserts that more than 30,000 swimming costumes were exported under the BANANA MOON label to Italy in 2003. By using the domain name, the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion (or association) with the Complainant’s trademarks, in particular as the word “store” is not used on the Respondent’s website itself.
B. Respondent
The Respondent does not deny that the domain name is confusingly similar to the Complainant’s marks, but contends that, before any notice of the dispute, the Respondent used the domain name legitimately in connection with a bona fide offering of goods, more particularly, the Respondent used the mark BANANA MOON since�1978, date of commercial registration of such business identifier with the Chamber of Commerce of Bari, Italy.
The Respondent further contends that there is no bad faith use as there is no offer of bathing suits on its website under the domain name at issue.
6. Discussion and Findings
Under paragraph�4(a) of the Policy, the Complainant must prove that each of the following three elements are present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(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 disputed domain name fully incorporates the Complainant’s distinctive BANANA MOON Marks. The mere addition of the generic word “store” does not eliminate the similarity between the Complainant’s marks and the domain name. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No.�D2005-0829 - ; Microsoft Corporation v. J. Holiday Co., WIPO Case No.�D2000-1493 - ).
Furthermore, it is also well established that the specific top level domain name is not taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No.�D2000-1525 - et al; Rollerblade, Inc. v. Chris McCrady, WIPO Case No.�D2000-0429 – ; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No.�D2001-0374 - ).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph�4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In the light of the Panel’s finding under the head of “Bad Faith” (cf. C. below) it is not necessary for the Panel to come to a decision in this regard. Suffice it to say that a judgment would have been difficult considering the Respondent’s fragmentary contentions as to its use of the business identifier BANANA MOON after its registration in 1978.
C. Registered and Used in Bad Faith
The two parts of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra�Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No.�D2000-0003 (cf. Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No.�Case No.�D2002-0952 - ; Telstra Corporation Ltd v. David Whittle, WIPO Case No.�D2001-0434 - ; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No.�D2003-0758 - ).
On the balance of evidence, however, the Panel is not convinced that the domain name was registered by the Respondent in bad faith, mainly for two reasons:
Firstly, the export of 30,000 bathing suits or swimming costumes by the Complainant to Italy (where the Respondent was domiciled when acquiring the domain name) in 2003 is not sufficient to establish that in this case the Respondent knew of the Complainant’s trademark rights and website then. The cancellation proceedings and oppositions against the Respondent’s Community trademarks were initiated by the Complainant only at a later stage. There is no evidence before the Panel that the Respondent had knowledge of prior Complainant rights before registering the domain name containing the business denomination Banana Moon. After all, the Respondent’s own first claim to such business identifier predates the priority date of the Complainant’s trademark rights by more than 10 years.
Secondly, the print-outs of the Respondent’s website available to the Panel do not indicate any evident connection to bathing suits or swimming costumes. The Complainant’s view that the Respondent’s use of the domain name is creating a likelihood of confusion (or association) with the Complainant’s trademarks is not supported by the evidence submitted and thus not shared by the Panel.
Accordingly, the Panel concludes that the first condition of the third requirement of the Policy has not been established and this Complaint must therefore be rejected.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Brigitte Joppich
Sole Panelist
Dated: April�16,�2007
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