Complainant is Etro S.p.A. of Milan, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is Sifeng Zhang of Shenzhen, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2011. On October 26, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On October 27, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On November 1, 2011, the Center transmitted an email to the parties in both Chinese and English regarding the language of proceedings. On November 4, 2011, Complainant confirmed its request that English be the language of proceedings. Respondent did not comment on the language of proceedings by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on November 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2011. Respondent did not submit any response. Accordingly, the Center confirmed Respondent’s default on November 29, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on December 23, 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
Complainant is an Italian company in the field of fashion. Complainant advertises fabric and leather fashion products, accessories, and fragrances under the ETRO trademark and trades under this mark in Italy and other countries in the world.
Complainant owns multiple trademark registrations for ETRO including International Trademark Registration No. 610967 for ETRO whish was granted on November 22, 1993 and designates China. This registration covers cosmetic, leather, and fabric products.
The disputed domain name was created on March 18, 2010. The registrant of the disputed domain name is identified as Sifeng Zhang, Respondent in this proceeding.
At the time the Complaint was filed, the website featured at the disputed domain name featured links to third party websites.
A letter was sent to Respondent on July 20, 2011 by a representative of Complainant requesting that the disputed domain name be canceled or transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to its ETRO trademark because it incorporates its ETRO trademark in its entirety and adds the word “links”, which Complainant states is a generic term with no distinctive character. Complainant maintains that the disputed domain name was registered after Complainant’s trademark was established and that Complainant has not authorized or licensed Respondent to register the disputed domain name or use the ETRO trademark.
Moreover, Complainant cites Respondent’s use of the disputed domain name for a holding page as reason why Respondent’s registration of the domain name was not undertaken for legitimate purposes. Complainant notes that Respondent is not related to Complainant, does not hold any rights in the ETRO trademark, and has never been licensed or otherwise authorized by Complainant to use Complainant’s ETRO trademark.
Regarding use of the disputed domain name, Complainant alleges that the disputed domain name has been used to display links to websites of third party competitors of Complainant which sell apparel and related products, and that these links are monetized. Complainant maintains this use is indicative of bad faith because Respondent has registered and has used the domain name in an effort to attract Internet users to the related website for the purpose of financial gain by creating confusion with Complainant’s ETRO trademark.
Finally, Complainant alleges that the WhoIs contact information provided by Respondent is false because Complainant’s correspondence to Respondent was returned as undeliverable. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Language of Proceeding
Paragraph 11(a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case.
The language of the registration agreement for the disputed domain name is Chinese. Complainant has requested that English be recognized as the language of the proceeding based partly on the observation that it is a language commonly shared by citizens of different countries, noting that Complainant in this case is Italian and that Respondent in this case is Chinese. Because Respondent did not object by the deadline, the Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language. Respondent has not acknowledged any communications transmitted by the Center.
The content featured on the disputed domain name is displayed in the English language. The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file its response in either language. Taking both of the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary delay. A. Identical or Confusingly Similar
The disputed domain name combines Complainant’s ETRO trademark and the term “links”. The use of “links” with Complainant’s ETRO trademark as featured in the disputed domain name does not sufficiently distinguish the domain name from the ETRO trademark to dispel the likelihood of confusion. Use of “links” in this manner could potentially increases the likelihood of consumer confusion because it could lead Internet users to believe that the “links” portion of the domain name refers to web links associated with Complainant’s ETRO trademark. Moreover, ETRO is a descriptive trademark and use of this trademark in a domain name has the potential to lead Internet users to believe that the domain name is authorized by Complainant or somehow related to Complainant.
Similar use of the term “links” in other domain names has been cited in past UDRP panel decisions as a non-distinctive element when combined with a trademark. See, e.g., LEGO Juris A/S v. Todd Ahlstrom,WIPO Case No. D2009-1712 (observing that “use of the suffix ‘links’ does not have any impact on the overall impression of the dominant part of the domain name” in a decision involving , a domain name which combined the complainant’s LEGO trademark with the term “links”) and RapidShare AG, Christian Schmid v. zuo xingyu,WIPO Case No. D2010-0627 (holding that “links” was a “non-significant” element in the domain name ). Moreover, it has been held that in certain circumstances the incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue. Advanced Micro Devices, Inc. v. Piere Macena,WIPO Case No. D2005-0652 (observing that “a domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or confusingly similar approximation, regardless of the other terms in the domain name”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Complainant has established trademark rights in ETRO which date to 1993 in China, the country cited as Respondent’s jurisdiction of residence. It is clear from the record that Complainant sells clothing items, accessories, and fragrances under its ETRO trademark and has established rights in the ETRO trademark.
There is no evidence in the record indicating that Respondent has ever traded under the term “Etro” or “Etrolinks”, that Respondent has trademark rights in either of these terms, or that Respondent has any other rights or legitimate interests in “Etro” or “Etrolinks”.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
The Panel is satisfied that Respondent probably had knowledge of Complainant’s ETRO trademark when registering the disputed domain name given that the domain name incorporates Complainant’s distinctive ETRO trademark in its entirety. The record shows that Complainant’s trademark rights in China precede the creation of the disputed domain name.
There is evidence suggesting that the links displayed on Respondent’s website are efforts to trade off the goodwill of Complainant’s trademarks. Specifically, the record shows that the website featured at the disputed domain name has featured links to third party websites which offer goods which travel in the same channels of trade as those sold by Complainant under its ETRO trademark. Links displayed include one to a website advertising third party fragrances and another to a website advertising third party jewelry and accessories. The incorporation of third party links regarding services competitive to those provided under another party’s trademark supports a finding that a domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728. Furthermore, registration and use of a domain name incorporating a trademark and providing links which expressly refer to goods/services provided under a complainant’s trademark has been held to be indicative of a respondent’s knowledge of the goods/services provided under the trademark. See Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517.
The disputed domain name features Complainant’s ETRO trademark and provides links to third party websites which advertise goods which are identical to the items offered by Complainant under its ETRO trademark. The use of the disputed domain name to advertise goods identical to those offered by Complainant is indicative of an intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by Complainant. Continued use of the domain name in this manner could lead consumers to mistakenly believe that the links featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s domain names.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 domain name be transferred to Complainant.
Kimberley Chen Nobles
Sole Panelist
Dated: January 10, 2012
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