WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Roberto Cavalli S.p.A., Roberto Cavalli Club S.r.l., and IGA Finance B.V. v. Alfer Group Case No. D2009-0713 1. The Parties
The Complainants are Roberto Cavalli S.p.A. of Milan, Italy, Roberto Cavalli Club S.r.l. of Milan, Italy, and IGA Finance B.V. of Amsterdam, Netherlands, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati of Italy.
The Respondent is the Alfer Group of Moscow, the Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2009. On June 2, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 2, 2009, GoD, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2009. The Response was filed with the Center on June 22, 2009.
The Center appointed David J.A. Cairns as the sole panelist in this matter on June 30, 2009. 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 Complainants constitute three entities acting within the Cavalli Group, a transnational entity that manufactures and sells the products of Mr. Roberto Cavalli. Roberto Cavalli S.p.A. is the “main company of the group.” IGA Finance B.V., since 1997, has been the majority shareholder in Roberto Cavalli S.p.A. and is the owner of various trademarks held throughout the world. Roberto Cavalli Club S.r.l. is an additional company within the Cavalli Group responsible for managing clubs.
IGA Finance B.V. owns three trademarks including the word CAVALLI: (i) European Community Trademark Registration No. 752196 first published in the Register on September 13, 1999 for ROBERTO CAVALLI; (ii) Russian Trademark Registration No. 284619 for ROBERTO CAVALLI; and (iii) Russian Trademark Registration No. 367990 for JUST CAVALLI.
IGA Finance B.V. has also applied to register as a European Community Trademark the word “Cavalli” on July 7, 2006. Robert Cavalli Club S.r.l. has also made trademark applications for the word “Cavalli” in the United Arab Emirates, the location of the flagship Cavalli Club.
The disputed domain name was registered on February 24, 2008 with GoD.
The Complainants submitted a print out of the content of the website hosted at the disputed domain name as at May 28, 2009. At the top of the page the viewer is informed that “This webpage is parked FREE courtesy of GoD.” The webpage contains a list in the Italian language of ‘sponsored listings' primarily relating to equestrian products or services, but including a link to ‘roberto cavalli fotografo'. There is also a list of ‘Related Searches' including ‘Roberto cavalli vestito'. The Panel entered the website at the disputed domain name from Spain on July 9, 2009. Again there was a page of sponsored links, although this time in English and Spanish. There were a number of links to clothing and fashion items, specifically referring to Roberto Cavalli. Accordingly, the Panel concludes that the content of the website is sponsored listings, that are computer generated depending on the location of the viewer. 5. Parties' Contentions A. Complainant
The Complainants state that the disputed domain name is identical or confusingly similar to those trademarks and trade names under the Complainants' ownership; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent registered and uses the disputed domain name in bad faith.
The Complainants state that they are and have been the owners of CAVALLI trademarks for many years. The Complainants refer to international news articles that feature Mr. Cavalli and his clothing. While the Complainants recognize that the industry in which the majority of this press has been received is fashion, and not the “total space” industry to which the term Cavalli Clubs pertains, they state that “the brand Cavalli Club is part and parcel” of the Cavalli Group's international image and provide an additional sampling of international news articles for support. The Complainants add that ‘Cavalli Club' is part of the trade name of Roberto Cavalli Club S.r.l. and is used as a common law trademark.
The Complainants state that the disputed domain name is “almost identical with the trademark and trade name CAVALLI GROUP, and is confusingly similar to the trademark CAVALLI.”
The Complainants assert that the Respondent has no right to use, nor any legitimate interest in, the disputed domain, and in particular: (i) the Respondent has not been authorized by the Complainants to register or use the disputed domain name; (ii) the Respondent is not associated in any way with the Complainants or their distribution network; (iii) the Respondent has never been commonly known in the normal course of business by the trademark, trade name, or domain name CAVALLI or CAVALLI CLUB; and (iv) there no evidentiary support for a bona fide non-commercial or otherwise legitimate fair use of the disputed domain name.
The Complainants acknowledge that the word ‘cavalli' mean ‘horses' in Italian but state that the website hosted at the disputed domain name has no substantive relation to horses. The Complainants describe the site's links to products and services related to horses as “mere window-dressing.” The Complainants further point out that such ‘window dressing' is contrasted with, and overshadowed by, the “three links on the left hand side of the Web site and all links on the right hand side point[ing] to Web sites selling parallel-imported and (possible) counterfeit CAVALLI fashion products.”
As regards bad faith, the Complainants state that “There is no way that Respondent may not have been aware of the trade names and trademarks CAVALLI GROUP and CAVALLI, and registration may only have occurred in bad faith.” The Complainants rely on four previous domain name decisions where bad faith was presumed based on the renown of the trademarks used: Banca Sella S.p.A. v. Mr. Paolo Parente (WIPO Case No. D2000-1157) (where the Administrative Panel ruled that the Respondent must have known that BANCA SELLA is a famous trademark in Italy for banking services); Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (“V is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”); Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226 (quoting the Veuve Cliquot decision); and Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137. The Complainants imply that the fame of their trademarks is comparable to the trademarks at issue in these proceedings
The Complainants seek transfer of the disputed domain name to IGA Finance B.V. B. Respondent
The Respondent submitted a Response that provided a specific rejection of the Complainants' allegation that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights. The Respondent stated that the “Complainant [sic] is not the owner of the trademark ‘Cavalliclubs'“and that the trademark CAVALLI CLUBS is not registered “in Europe nore [sic] in the rest of the countries.” The Respondent states further that “the word cavalli is a plural form of the word horse in Italian language. So this word is not unique and is used in everyday speech by millions of people.” 6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
The Policy requires the Complainants to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent's domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainants own the registrations of the ROBERTO CAVALLI and JUST CAVALLI trademarks referred to above.
The disputed domain name is not identical with the Complainants' trademarks. The Complainants' trademarks consist of two words, of which only the word CAVALLI appears in the disputed domain name. Further, the disputed domain name includes the suffix ‘clubs' which does not appear in any of the registered trademarks. This is a case of the disputed domain name incorporating part of registered trademarks but also including novel elements.
The similarity of the registered trademarks and the disputed domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin.” (See Pfizer Inc v. The Magic Islands,WIPO Case No. D2003-0870).
The distinctive element of the registered trademarks is the word “cavalli”, which is common to both the registered trademarks as well as the disputed domain name. It is true that the word “cavalli” is an ordinary descriptive word in the Italian language. However, the evidence establishes that there is also substantial goodwill or secondary meaning attached to the mark CAVALLI in certain commercial contexts because of the success of the products of Mr. Roberto Cavalli marketed by the Complainants and for this reason the word CAVALLI is the distinctive element of the registered trademarks.
The commercial use of the CAVALLI element of the registered trademarks includes ‘Cavalli Clubs'. The disputed domain name therefore involves a combination of the distinctive element of a registered trademark and a descriptive word that refers to a type of business (i.e., ‘clubs') in which the Complainants are involved and where the distinctive element of the registered trademarks has been actively promoted. The Panel is satisfied that the suffix ‘clubs' refers to and emphasises the trademark signification of the word CAVALLI and is likely to be understood by Internet users in this manner rather than as referring to a possible group of equestrian enthusiasts or other equestrian related theme.
For these reasons, the Panel is satisfied that the disputed domain name is confusingly similar to the ROBERTO CAVALLI and JUST CAVALLI trademarks and that Internet users will associate the disputed domain name with the Complainants' trademarks, and assume that the Respondent's website relates to the clubs associated with Mr. Roberto Cavalli and the Complainants.
The Panel notes this decision is consistent with the Panel decision is Roberto Cavalli S.p.A, Roberto Cavalli Club S.r.l, IGA Finance B.V., v. Vértigo Lugo, S.L.,WIPO Case No. DES2008-0034.
Therefore the first element of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent owns or has contractual rights in any registration of a CAVALLI or CAVALLICLUBS trademark; (ii) the Respondent is not authorised or licensed by the Complainants to use the name ‘Cavalli' or to register and use the disputed domain name; (iii) the Respondent in its Response has not suggested that it is commonly known by the name ‘Cavalli' or ‘Cavalliclubs', and there is no other evidence to suggest the circumstances referred to in paragraph 4(c)(ii) exist in the present case; (iv) the Respondent has not submitted any evidence of his proposed use of the site, and on the evidence before the Panel of its current commercial use (through sponsored links) the Panel concludes that the circumstances described in paragraph 4(c)(iii) do not exist in the present case.
As regards paragraph 4(c)(i), the use being made of the disputed domain name prior to notice of the dispute was to redirect Internet users to websites associated with the word ‘cavalli'. When viewed from Italy these links included equestrian related websites. However, the Panel concludes that this was not a bona fide service within the meaning of paragraph 4(c)(i) for two reasons: (i) the Respondent did not deny knowledge of the Complainants' trademarks, products or reputation, but instead asserted that in its view the Complainants had no rights to the expression ‘cavalliclubs'. The Panel concludes that the Respondent knew of the Complainants' trademarks and reputation, and sought to benefit therefrom; and (ii) the fact that the website's listings are computer generated depending on the location of the viewer undermines any claim to a bona fide offering of goods or services in relation to the disputed domain name. Further, such links in relation to fashion items raise a real risk of directing users to sites selling counterfeit goods, as alleged by the Complainants. The equestrian related websites generated for Italian viewers are a mere fortunate coincidence of language, and not indicative of a bona fide service.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith. The Respondent's use of the disputed domain name in the present case falls within paragraph 4(b)(iv): by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
The purpose of commercial gain is demonstrated by the use of the website to host sponsored links. The Respondent's registration and operation of the website hosted at the disputed domain name, however passive such operation may be or however small the gain, is sufficient for this purpose: see Port Aventura, S.A. v. Fred McCaw c/o Chelsey McCaw Publishing, Inc.,WIPO Case No. D2008-0177. The likelihood of confusion is established by the confusing similarity between the Complainants' trademarks and the disputed domain name, and particularly the Complainants' commercial use of the name Cavalli in relation to clubs. Internet users are likely to assume that this website is the website of, or affiliated to, the clubs promoted by the Complainants.
Further, the Panel is satisfied on the evidence that the Respondent knew of the Complainants' CAVALLI trademarks at the time of the registration of the disputed domain name and registered it with the intention of profiting from potential confusion, and this is further evidence of bad faith. As noted above, the Respondent did not deny knowledge of the Complainants' trademarks at the time of registration; rather, the Respondent believed that the Complainants had no rights to the disputed domain name.
For these reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith by the Respondent. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant IGA. Finance B.V.
David J.A. Cairns
Sole Panelist
Dated: July 10, 2009
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