The Complainant is Dolce & Gabbana S.r.l. of Milano, Italy, represented by Studio Turini, Italy.
The Respondent is PrivacyP / Chen Jianglei of Queensland, Australia and Pu Tian, China, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2011. On October 18, 2011, the Center transmitted by email to UK2 Group Ltd a request for registrar verification in connection with the disputed domain name. On October 19, 2011, UK2 Group Ltd (“the Registrar”) transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 21, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint also with regard to an administrative deficiency. The Complainant filed an amended Complaint on October 24, 2011. In response to a request for clarification sent by email by the Center, the Complainant filed another amended Complaint on October 26, 2011.
The Center verified that the Complaint together with the amended Complaints 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 November 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2011.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on November 25, 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 submitted evidence that it is the licensee of the followings trademarks:
DOLCE & GABBANA, Italian trademark registration No. 372387 with filing date July 26, 1985.
DOLCE & GABBANA, international trademark registration No. R555568 with registration date February 14, 1990.
DOLCE & GABBANA, international trademark registration No. 625152 with registration date July 13, 1994.
DOLCE & GABBANA, international trademark registration No. 666432 with registration date April 24, 1996.
DOLCE & GABBANA, Community Trademark registration No. 000454066 with registration date February 15, 1999.
DOLCE & GABBANA, Community Trademark registration No. 001842079 with registration date December 4, 2001.
The disputed domain name was registered on May 16, 2011. 5. Parties’ Contentions A. Complainant
“Dolce” and “Gabbana” are the surnames of the two famous stylists Domenico Dolce and Stefano Gabbana, founders of the “Dolce & Gabbana” maison. DOLCE & GABBANA is one of the most famous trademark in the world in the field of fashion and it is a well-known trademark globally. The Complainant is the exclusive licensee of numerous DOLCE & GABBANA trademarks.
The disputed domain name and the Complainant’s trademark DOLCE & GABBANA are identical, since the character “&” has the same meaning as the word “e”. Furthermore, due to technical limitations it is not possible to include the “&” symbol in a domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized, licensed or otherwise allowed, nor by the Complainant or by the owner, to use the name DOLCE & GABBANA nor to apply for any domain name incorporating the trademark. In addition, the Respondent is not commonly known by that name.
The Complainant maintains that the disputed domain name was registered and is being used in bad faith. Given the fact that it has been established in Dolce & Gabbana S.r.l. v. Domains by Proxy, Inc. / Renee Carr,WIPO Case No. D2011-0597 that the trademark DOLCE & GABBANA is famous worldwide, the Complainant is of the opinion that the Respondent must have been aware of the existence of the Complainant’s trademark and reputation prior to registering the disputed domain name.
In addition, the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on the Respondent’s website or location. The Respondent is using the disputed domain name to sell copies of original goods by DOLCE & GABBANA. On the Respondent’s website (Annexes 10 and 11 to the Complaint) it clearly states: “We specialize in quality replica products at an affordable factory price”.
The Respondent is not only selling copies of goods (woman’s handbags) with the brand DOLCE & GABBANA on the website, but also other brands and particularly of competitors of the Complainant. Consumers that visit the Respondent’s website can also find copies of goods with the brands GUCCI, CHANEL, PRADA, MIU MIU, etc. 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 disputed 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 the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the exclusive licensee of the registered trademark DOLCE & GABBANA. The disputed domain name incorporates the Complainant’s trademark in its entirety, with the exception of the character “&” which is substituted by the character “e”. As argued by the Complainant, the character “&” is a special character that cannot be used in a normal second-level domain name due to technical restrictions and therefore the letter “e” is commonly used as a substitute for the character “&” in some countries (for example “e” means “and” in Italian).
Furthermore, the disputed domain name contains hyphens. However, as held in previous UDRP decisions, the inclusion of a hyphen in a disputed domain name does not necessarily distinguish the domain name from the trademark in which the Complainant has established rights. See for example Giorgio Armani S.p.A. v. lv kefeng,WIPO Case No. D2011-0740.
Having the above in mind, it is the opinion of the Panel that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made 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 prior to the dispute; or
(ii) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(iii) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registrations for DOLCE & GABBANA predate the Respondent’s registration of the disputed domain name . The Complainant has not licensed or in any way consented to the Respondent’s use of the trademark in the disputed domain name.
From the evidence submitted in this case, it is clear that the disputed domain name is being used by the Respondent to sell copies of the Complainant’s products. The Respondent’s website, to which the disputed domain name resolves, contains the following statement: “We specialize in quality replica products at an affordable factory price”. According to the submitted evidence, the Respondent is selling not only copied products from the Complainant but also copied products from several competing brands. Thus, the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence in this case indicating that the Respondent is the owner of any trademark rights similar to any of the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
It has been argued by the Complainant that the Respondent intentionally registered the disputed domain name in order to take advantage of the reputation and goodwill of the Complainant’s trademark DOLCE & GABBANA and that the Respondent is using the Complainant’s trademark for commercial gain.
From the submitted evidence in this case, it is clear that the Respondent’s commercial website, to which the disputed domain name resolves, contains numerous references to the Complainant’s products and trademarks. Thus, the Panel finds that the Respondent knew or should have known of the Complainant’s trademarks at the time when the Respondent registered the disputed domain name.
Considering that the disputed domain name is used to sell copies of the same products for which the trademarks are registered (in particular, it appears that the Respondent was selling Complainant’s woman’s handbags) and in the absence of contrary evidence, the Panel finds that the Respondent registered and used the disputed domain name in order to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name has been registered and used in bad faith. 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.
Johan Sjöbeck
Sole Panelist
Dated: November 29, 2011
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