The Complainant is DBA LUX 1 of Luxembourg, Luxembourg, represented by Cabinet Germain & Maureau, France.
The Respondent is S, Andrea Fletcher of Sydney, Australia. 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 June 23, 2011. On June 23, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same day, 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 July 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2011.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on August 4, 2011. 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 DBA LUX 1, one of Europe’s leading developers, manufacturers and retailers of intimates, with several brands such as LOVABLE, DIM, UNNO, WONDERBRA (license), PLAYTEX (license), ABANDERADO, etc. DBA LUX 1 was formed in September 2005.
The Complainant owns numerous trademark registrations for the LOVABLE mark, including the following:
- Community trademark LOVABLE in class 25, Registration number 007 298 276, registered on May 27, 2009;
- Community trademark LOVABLE & heart device in color in class 25, Registration number 003537982, registered on April 15, 2005;
- Community trademark LOVABLE MILLENIUM BRA in class 25, Registration number 000909895, registered on December 21, 1999;
in the following jurisdictions: Austria, Bulgaria, Benelux, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, United Kingdom of Great Britain and Northern Ireland, Greece, Hungary, Ireland, Italy, Lithuania, Latvia, Malta, Poland, Portugal, Romania, Sweden, Slovenia.
The disputed domain name was registered on December 14, 2010. 5. Parties’ Contentions A. Complainant
The Complainant argues the following:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the Complainant is the registered owner of numerous trade and service mark registrations for the mark LOVABLE.
That the website to which the disputed domain name resolves offers links to third party websites which feature a range of goods and services, some of which are identical/similar to the services/products for which the Complainant has registered marks.
That the disputed domain name incorporates in its entirety the LOVABLE trade and service mark and that the most distinctive trademark element is LOVABLE, associated with the descriptive word “bras” in this field of activity.
That the Respondent has added to the LOVABLE trademark in the disputed domain name the common English word “bras”.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
That the Complainant has not authorized the Respondent to use the LOVABLE mark or any other mark confusingly similar to it.
That the Respondent has been using the disputed domain name to capture traffic, particularly from Internet users who mistakenly enter the disputed domain name when attempting to visit the Complainant’s website (for example “”), so as to divert those Internet users to the Respondent’s website.
That the website to which the disputed domain name resolves facilitates the advertisement and sale of products originating from many of the Complainant’s competitors.
That the Complainant did not authorize the Respondent to use the LOVABLE mark or name, or anything confusingly similar, to advertise and offer for sale non-LOVABLE brand products.
That the incorporation of another’s mark into a domain name in order to market competitors’ goods and generate revenue through sponsored links to the websites of those competitors is not a legitimate use of the mark.
That the use of the disputed domain name leads Internet users to think that the Complainant is associated with or sponsors the disputed domain name, or that some connection exists between the Respondent and the Complainant, where no such association, sponsorship or connection exists.
That the Respondent is seeking to exploit the LOVABLE name and mark in which the Complainant has prior rights, on the Internet, to create a commercial gain for itself.
That the Complainant’s trademark LOVABLE is well known and recognizable throughout the world, and that it is inconceivable that a domain name incorporating the LOVABLE name and mark, or one that is confusingly similar to it, could be used to promote intimate products without the authorization of the Complainant.
3. The disputed domain name was registered and is being used in bad faith.
That the Respondent has intentionally attempted, by registering and using the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainant’s LOVABLE trade and service marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
That the exploitation of the reputation of trademarks in order to obtain click-through commissions from the diversion of Internet users, as the Respondent is achieving through use of the website to which the disputed domain name resolves, is a common example of use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Under the Policy, the Complainant must prove that each of these elements is present.
As the Respondent has failed to submit a response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint, Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trademark LOVABLE.
The Complainant’s trademark LOVABLE is entirely incorporated in the disputed domain name . The addition of the word “bras” does not confer a distinctive character to the disputed domain name, in relation to the Complainant’s trademark. See America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; see also, Mutatis Mutandis, MoneyGram Payment Systems Inc. v. Elizabeth Muriel Hernández,WIPO Case No. D2006-1506; Princess International Sales and Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine,WIPO Case No. D2002-0419; and America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713.
The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the confusing similarity analysis, a panel usually does not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Diageo Brands B.V., Diageo North America, Inc., and United Distillers Manufacturing, Inc. v. iV a.k.a. Alec Bargman, WIPO Case No. D2004-0627.
Considering that the disputed domain name is confusingly similar to the Complainant’s trademark LOVABLE, the first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)).
The Respondent has not submitted evidence to show the existence of use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Complainant’s Complaint, not contested by the Respondent, shows that the Respondent is using the disputed domain name to divert Internet users to a website with links to competitors of the Complainant. This use is not legitimate or noncommercial. See, The Paragon Gifts Holdings, Inc. v. Click Cons. Ltd, WIPO Case No. D2007-0304.
On the contrary, the Complainant has submitted evidence that the Respondent was using the disputed domain name to promote intimate products, from competitors of the Complainant, which does not give any rights or legitimate interests to the Respondent, see VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager,WIPO Case No. D2010-0925; O, Inc. v. Metro Media,WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates,WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139; Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah,WIPO Case No. D2007-1368; and Alfa Laval AB and Alfa Laval Corporate AB v. A,WIPO Case No. D2007-1881.
The Panel finds that the Complainant has not granted any license or authorization to the Respondent to use its mark in any manner, nor is there any affiliation between the Complainant and the Respondent to justify the use of the Complainant's mark by the Respondent.
The Panel finds that the Respondent is not connected with the Complainant, but uses the Complainant's mark with an intention to derive advantage from Internet users’ confusion. Such use by the Respondent is not legitimate use and does not confer any rights in favor of the Respondent.
No evidence has been submitted by the Respondent showing that the Respondent has been commonly known as , or that said Respondent has used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Therefore, this Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name . The second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.
The uncontested evidence indicates that the disputed domain name was registered and is being used in order to attract Internet users and direct those users to the Respondent’s website.
The case file contains evidence showing that the disputed domain name resolves to a website that contains links to some of the Complainant’s competitors (for example, Panache, a British Lingerie Company, Hugo Boss, another apparel company, etc.), which proves that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark LOVABLE as to the source, sponsorship, affiliation or endorsement of the website. This conduct constitutes bad faith under Paragraph 4(b)(iv) of the Policy. See Owens Corning v. NA, WIPO Case No. D2007-1143.
Therefore the third element of the Policy has been fulfilled. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Dated: August 18, 2011
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