The Complainant is G&P Net S.p.A., of Altopascio (LU), Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is Kenn Lee, of Shanghai, the People’s Republic of China. 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 27, 2011. On June 27, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 29, 2011, 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 July 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2011.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on August 9, 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 has asserted that it has been in the business of producing, marketing and selling articles of clothing and accessories and has used the trademark PEUTEREY since at least as early as 1997. The Complainant has provided evidence to show that it is the owner of a number of registered rights in the trademark PEUTEREY dating from 1995 to date. The Complainant’s products can be found in retail stores in 25 countries including Italy, Andorra, Austria, Belgium, Czech Republic, Denmark, France, Germany, Japan, Republic of Korea, Liechtenstein, Luxembourg, Norway, Netherlands, Portugal, Russian Federation, San Marino, Saudi Arabia, Spain, Sweden, Switzerland, Turkey, Ukraine, and United States of America. The Complainant has also provided evidence to show that there are no third party registrations of trademarks internationally which are identical or similar to the trademark PEUTEREY. Whilst the Complainant has also referred to two previous WIPO decisions in similar cases that were favourable to it, the Panel will not place too much weight on the same as it is a Panel’s duty to look purely at the facts and law and be the sole arbiter of the same in the specific matter in which it has been asked to make a decision on. 5. Parties’ Contentions A. Complainant
5.1. The Complainant contends that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which it holds rights of the registered trademark. The Complainant claims that it owns the rights of PEUTEREY in class 25 based on the following:
(i) Italian trademark registration No. 1155498 PEUTEREY dating back to July 26, 1995;
(ii) Community trademark registration No. 1736818 PEUTEREY dating back to July 3, 2000;
(iii) International registration No. 646277 PEUTEREY dating back to September 6, 1995 covering Austria, Benelux, Switzerland, Germany, Spain, France, Armenia, Australia, Azerbaijan, Belarus, People’s Republic of China, European Union, Georgia, Kazakhstan, Kyrgyzstan, Norway, Romania, Russian Federation, San Marino, Republic of Korea, Tajikistan, Turkey, Turkmenistan, Ukraine, United States of America and Uzbekistan;
(iv) Hong Kong, China, registration No. 300342774 PEUTEREY (figurative) dating back to April 28, 2004.
(v) In addition, the Complainant has provided evidence from the Italian Registration Authority showing that it owns the domain name registration for , which dates back to February 25, 2000 and which corresponds to an Italian website whereon the Complainant promotes its products bearing the trademark PEUTEREY.
(vi) The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s PEUTEREY trademark and that the only distinction between the disputed domain name from the Complainant’s mark is the inclusion of the suffix ".com". The Complainant has referred to earlier decisions that have ruled that such suffix must be neglected when a domain name is compared with an earlier trademark.
5.2. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
(i) A Saegis search confirms that the Respondent is not affiliated in any way with the Complainant and does not own any Chinese trademark applications or registrations for PEUTEREY or any similar marks in connection with any goods or services.
(ii) The Respondent is not commonly known by the domain name and does not trade under the name "peutereyit" or "peuterey" and does not make any legitimate commercial use thereof.
(iii) The Complainant has been using its PEUTEREY trademark in commerce since long and has established rights throughout the world, including China, in the PEUTEREY trademark.
(iv) The website “www.” is currently active and is offering counterfeit goods for sale on the Respondent’s website.
(v) Even in the event that part of the goods offered for sale in the Respondent's website were not counterfeit, the fact remains that the Respondent falsely suggests that it is the trademark owner, and that the website “www.” is the official PEUTEREY site.
5.3. The Complainant, lastly, contends that the disputed domain name was registered and is being used in bad faith for the following reasons:
(i) By using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain;
(ii) Since the disputed domain name was created just over six (6) months ago, it is obvious that the Respondent registered it with a view to commencing an unlawful commerce.
(iii) The Respondent’s registration of was done to confuse potential customers as to the Respondent’s affiliation with the Complainant.
(iv) The Respondent’s domain name is likely to discourage Internet users from locating the Complainant’s true website, thereby diluting the value of the Complainant’s PEUTEREY trademark.
(v) Kenn Lee, the Respondent, has even added a picture taken directly from the Complainant’s official campaign. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The Panel finds that the Respondent has appropriately received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has employed reasonably available means to notify the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.2 The Panel has reviewed the Complaint together with its annexes and, in light of this material, the Panel finds as set out below.
6.3 This Panel does not find any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel deciding the dispute based upon the Complaint.
6.4 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700). Namely, the Complainant must prove that:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
6.5 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to submit a response, a panel may draw negative inferences from that respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
6.6 Where the Respondent chooses not to present any such evidence to dispute the claims of the Complainant, an inference may be made that such evidence would not have been favorable to the respondent, or that he accepts the factual claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the disputed domain name. (See Caterpillar Inc. V. Spiral Matrix/ Kentech, Inc. /Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808) A. Identical or Confusingly Similar
6.7 Pursuant to paragraph 4(a) (i) of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
6.8 In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark right; and the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.9 The Complainant has provided proof as to its registered trademark rights in the trade mark PEUTEREY as well as the domain name . Given this, the Panel has little difficulty in concluding that the disputed domain name is confusing similar to a trademark in which the Complainant has rights. The Panel agrees with the Complainant that the inclusion of the suffix ".com” simply increases the likelihood of confusion because these generic terms imply a direct connection to the Complainant’s protected PEUTEREY trademark and does therefore have an impact on the likelihood of confusion.
6.10 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.11 At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the name of the Complainant with a view to attracting Internet users to its website, where it offers the same or similar services as those offered by the Complainant. The Panel accepts here that such activity does not provide the Respondent with a legitimate interest in the disputed domain name.
6.12 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
6.13 Paragraph 4(c) of the Policy provides examples of circumstances that shall demonstrate rights or legitimate interests to a disputed domain name for purposes of paragraph 4(a)(ii). However, it is the prevailing consensus view among Panelists that where a complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the Respondent is deemed to have no rights or legitimate interests in the disputed domain name.
6.14 As previously held by other WIPO UDRP Panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [c]omplainant”. (See eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001)
6.15 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made noncommercial or fair use of the disputed domain name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services but instead has assertedly sold unauthorised or counterfeit products of the Complainant. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name which is confusingly similar to the Complainant’s trademark which showing has remained unrebutted.
6.16 Under the current record, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
6.17 The Panel accepts the Complainant’s contention that the Respondent registered the disputed domain name in the knowledge of the Complainant’s business and its use of the trademark PEUTEREY. This is inherently probable in view of the fact that the Respondent only registered the disputed domain name created just over six (6) months ago after the Complainant had had many years of registration and use of PEUTEREY trademark, and in view of the subsequent use of the disputed domain name.
6.18 Given this finding, the Panel also infers and accepts the Complainant’s undisputed contention that the Respondent registered the disputed domain name with a view to diverting Internet users with an interest in PEUTEREY to its website for its own commercial gain.
6.19 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain users to a website by creating a likelihood of confusion with the Complainant’s trademark as to the source of a website.
6.20 Given that the Respondent has failed to show (for the reasons set out under the heading of legitimate Interests above) that it was using the disputed domain name exclusively to deal in genuine PEUTEREY products and has also failed to disclose on the site any relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain users to its website by creating a likelihood of confusion with the Complainant’s trademark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.21 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. Considering the Complainant has established all three elements of the Policy, the Panel finds in favour of the Complainant. 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.
Colin Yee Cheng Ong
Sole Panelist
Dated: August 29, 2011
Full & Egal Universal Law Academy