WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Etro S.p.A. v. T AG, Ricky Menzer Case No. D2010-0743 1. The Parties
The Complainant is Etro S.p.A., of Milan, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is T AG, Ricky Menzer, of Cham, Switzerland. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2010. On May 10, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 10, 2010, eNom 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 May 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 7, 2010.
The Center appointed Petter Rindforth as the sole panelist in this matter on June 17, 2010. 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant is a company in the fashion business located in Milan, Italy, trading under the trademark ETRO in Italy and other countries.
The Complainant holds trademark registrations for ETRO (word and figurative) in a number of countries, represented by (among others):
Italian national trademark registration No. 1,044,312 ETRO
Filed on September 29, 2003
Registered on April 17, 2007
Classes: 3, 18, 24, 25
International trademark registration No. 610,967 ETRO
Granted on November 22, 1993
Classes: 3, 18, 24, 25
Designating Switzerland and other countries
International trademark registration No. 492,776 ETRO (figurative)
Granted on March 28, 1985
Classes: 18, 25
Designating Switzerland and other countries
(Copies of the Certificates of Registration provided as Annex E of the Complaint).
The Complainant's attorney sent a cease and desist letter (copy of the same provided as Annex G of the Complaint) to the Respondent on February 4, 2010. No reply was received to that letter.
The Respondent registered the disputed domain name on December 30, 2009. No detailed information is provided about the Respondent's activities, apart from what is mentioned below by the Complainant. 5. Parties' Contentions A. Complainant
The Complainant claims to be a well known company in the fashion business.
According to the Complainant, until February 2010 resolved to a web site reproducing the Complainant's trademark and on which apparel and related products were offered for sale to the general public at discount prices (printout from the site provided as Annex F of the Complaint). After the abovementioned cease and desist letter, the web page was changed to show the Complainant's mark but without the link to the page selling Etro products.
The Complainant is of the opinion that the disputed domain name is identical or confusingly similar to the Complainant's registered trademark, as it incorporates the Complainant's trademark ETRO in its entirety, with only the addition of the descriptive words “outlet” and “shop”.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent does not seem to hold any trademark rights in respect of ETRO, the domain name does not correspond to the business name of the Respondent, and the Respondent is not commonly known as Etro. Further, the Complainant has never authorized the Respondent to use ETRO.
The Complainant argues that was registered and is being used in bad faith, in particular pointing to circumstances indicating that (i) the disputed domain name has been registered for the purpose of disrupting the business of a competitor and (ii) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site.
Before the Complainant sent the cease and desist letter, the disputed domain name was redirected to a web site offering for sale products bearing the trademark ETRO, suspected to be counterfeit, as well as other apparel and related products bearing trademarks of Complainant's direct competitors. After the cease and desist letter was sent, the link mentioned was removed and the disputed domain name being connected to a web site dominated by the Complainant's trademark and the words “Etro Outlet 2009/2010 - Visit our Outlet online Strore — Etro Online Shop — Etro best buy — Etro worldwide delivery — Etro online kaufen, acquistare.”
According to the Complainant, the Respondent had knowledge of the ETRO mark at the time of registration of the disputed domain name, and knew that the ETRO branded products were renown in the field of fashion.
The Complainant requests that the Panel issue a decision that the domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of the ETRO mark in Italy, Switzerland and a number of other countries as discussed above and shown by Annex E of the Complaint. It is hereby noted by the Panel that all three registrations of Annex E predates the registration of the disputed domain name, a fact that will be further considered in relation to the question of registration and use in bad faith below.
The relevant part of the disputed domain name is . See Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. 53545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that the Respondent has failed to sufficiently distinguish the disputed domain name from the Complainant's registered mark by merely adding the terms “outlet” and “shop”. See Experian Info. Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (finding that several domain names incorporating the complainant's entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant's mark); see also Google Inc. v. Xtraplus Corp., WIPO Case No. D2001-0125 (finding that the respondent's domain names were confusingly similar to complainant's GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). In this case, “outlet” and “shop” as added to the trademark ETRO indicates that the domain name resolves to a web page where ETRO goods can be found (presumably at a discounted price).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's trademark ETRO. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent is not authorized to use the trademark ETRO in the domain name. The Panel notes that there is nothing in the Whois information or the Respondent's business name indicating any rights to or relation with ETRO.
By not submitting a Response, the 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.
As shown by the Complainant, the Respondent at one time used for a web site that initially sold products marked ETRO (suspected by the Complainant to be counterfeit) as well as products of the Complainant's competitors, later changed to a web site only displaying the Complainant's trademark and words indicating that the site was a genuine online shop of the Complainant. The Panel additionally notes that the disputed domain name does not currently resolve to an active web site.
The Panel concludes that such use cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy. See MSNBC Cable, LLC v. T,WIPO Case No. D2000-1204 (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant's mark by redirecting Internet traffic to its own website). See also Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258 (stating that “…the Respondent is not connected with the Complainant, but uses the Complainant's mark with an intention to derive advantage from user confusion. Such use by the Respondent is not legitimate use and does not confer any rights in favour of the Respondent”).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has valid trademark registrations for the ETRO mark, covering Switzerland (the country listed in the WhoIs for the Respondent), and predating the registration date of the disputed domain name by several years.
In the absence of any contradicting arguments or evidence from the Respondent, the Panel has no reason to question the Complainant's assertion that the mark ETRO is well known in the fashion business.
Accordingly, the Respondent is likely to not only have had knowledge of the Complainant's mark when registering , but the mere combination of the trademark with the generic words “outlet” and “shop” indicates that the Respondent registered the disputed domain name with the Complainant's mark in mind.
The Respondent has done nothing to identify itself as independent from the Complainant. On the contrary, as shown by the Complainant, the two versions of the web site connected with the domain name are, in the view of the Panel, set up in order to indicate a strong and close association with the Complainant. This constitutes bad faith use under the Policy. See Netwizards, Inc. v. Spectrum Enterprises,WIPO Case No. D2000-1768 (“registration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the Complainant, from the Complainant's website to the website of . . . a company which directly competes with the Complainant, constitutes bad faith registration and use”). See also Oly Holigan, L.P. v. Private, NAF Claim No. 95940 (finding bad faith where respondent used the disputed domain name to “redirect the Complainant's consumers and potential consumers to commercial websites which are not affiliated with Complainant”).
It is also noted that after receiving the Complainant's cease and desist letter, the Respondent amended the resolving web page in a way that, according to the Panel, only made it even more likely to be considered as associated with the Complainant.
Thus, the Panel concludes that the domain name is both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy. 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.
Petter Rindforth
Sole Panelist
Dated: June 30, 2010
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