Complainant is Duvetica S.r.l. of Venezia, Italy, represented by Kivial s.r.l, Italy.
Respondent is xmyilong company / davis lin of Putian City, United States of America. 2. The Domain Name and Registrar
The disputed domain name is which is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2011. On November 8, 2011, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name. On November 9, 2011, N LLC. 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 Respondent of the Complaint, and the proceedings commenced on November 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 2, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on December 13, 2011. This Panel finds that it was properly constituted. This 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 engaged in the production and sale of down jackets.
Complainant has rights over the trademark DUVETICA and design, for which it holds several registrations, including, among others: registration No. 887512 with the Italian Office of Patents and Trademarks, registered in April 2003, classes 3, 18 and 25; and registration No. 803292 with the World Intellectual Property Organization, registered in May 2003, classes 3, 18 and 25.
The disputed domain name was created on December 18, 2010. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows:
The trademark DUVETICA was created in 2003 as a brand specializing in fashionwear down jackets, with the intention of offering international markets a concept of garment for men and women combining high quality with an up-to-date design. Complainant's first market was in Japan, where it achieved a recognized leading position in its product category.
Such trademark progressively extended and developed its presence on the international markets, and now Complainant produces about 180,000 jackets a year distributed in the best boutiques in several countries in eastern and Western Europe, as well as in Japan; Hong Kong, China; Republic of Korea; United States of America and Canada.
Complainant has protected its distinctive signs by registering trademarks both in Italy and internationally, and by registering domain names in the most important extensions.
The name “Duvetica” is certainly known on an international level, including where Respondent resides (China, as it is understandable from the postal address). During the same months the disputed domain name was registered there was a press review showing advertisements and images of the display spaces set up in some of the main Chinese stores.
Respondent has taken over Complainant's trademark in its entirety. As regards paragraphs 4(a)(i) and 4(a)(ii) of the Policy, the disputed domain name is identical to Complainant’s own trademark and Complainant asserts that Respondent has no right or license to use Complainant's trademark, nor any authorization to register domain names on behalf of Complainant.
Specific searches within the trademark field throughout the world have also established that Respondent does not hold any similar trademark or trademark that interferes with Complainant's.
With regard to the registration and use in bad faith of the disputed domain name, Complainant's trademark DUVETICA is highly distinctive in that it creates an innovative play on words with the word “duvet”, and there is no evidence that Respondent is using the very same name for a bona fide offering of different goods or services, or other fair uses.
The web site currently connected to the disputed domain name is totally confusable with Complainant's official site. At the top left it shows Complainant’s trademark DUVETICA, copied from Complainant’s official web site and with a clear symbol of a registered trademark, and Complainant's trademark is repeated for every article or every access menu to such web site, without any explicit authorization.
The web site associated to the disputed domain name does not mention the fact that it is managed by a retailer or a third party and - although it does not completely imitate the graphics and layout of Complainant's web site - the visitor is unconsciously led to think he is consulting, and making purchases directly from, Complainant's e-commerce site.
The products on sale at the disputed domain name are articles of clothing marked as created by Complainant, of uncertified provenance but with prices that are not consistent with the quality of the articles on sale; although not wishing to make any hypotheses on whether such articles are counterfeit, Complainant points out that in any case Respondent is not an authorized dealer.
Respondent has already in the past been subjected to UDRP procedures contesting domain names that are always connected to the clothing market and in obvious infringement of other party's rights: for example UDRP decision managed by the National Arbitration Forum, John Rich & Sons Investment Holding Company v. xmyilong company / davis lin, NAF Claim no. 1367632.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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. A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the trademark DUVETICA and design.
The disputed domain name entirely incorporates the word DUVETICA. It is well established that a domain name can only consist of an alphanumeric string, and cannot incorporate figurative, or device elements of a mark.2
Therefore, this Panel finds that the disputed domain name is identical to Complainant’s trademark. B. Rights or Legitimate Interests
Complainant has alleged, and Respondent has failed to deny, that Respondent has no right or license to use Complainant's trademark, nor any authorization to register domain names on behalf of Complainant, and that Respondent is not an authorized dealer.
Complainant contends that specific searches within the trademark field throughout the world showed that Respondent does not hold any trademark similar to Complainant's, although it provided no evidence of that.
The web site associated to the disputed domain name shows the “Duvetica” word followed by the symbol ®, and features the sale of “Duvetica” jackets. Complainant asserts that such articles are of uncertified provenance and with prices that are not consistent with the supposed quality of the articles on sale. Complainant points out that the web site associated to the disputed domain name does not mention the fact that it is managed by a retailer or a third party and thus any visitor is unconsciously led to think he is consulting, and making purchases directly from, Complainant's e-commerce site. That is not a bona fide offering of products or services in this Panel’s view.
The unauthorized appropriation of another’s trademark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon Respondent. As established in prior UDRP cases, such use is not a bona fide offering of products or services (See Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629).
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name3. From the documentation that is on the present record there is no indication that may lead to consider that Respondent might have rights or legitimate interests in the disputed domain name, but rather the opposite may be validly inferred. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which is identical to Complainant’s trademark, this Panel considers that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Taking into consideration Complainant’s international presence (including at China, country where Respondent is domiciled pursuant to the Registrar’s report), that Complainant’s registration and use of its trademark preceded the creation of the disputed domain name, and the content of the website associated to the disputed domain name,4 this Panel is of the view that Respondent should have been fully aware of the existence of Complainant and Complainant’s trademark at the time it obtained the registration of the disputed domain name.
The use of the disputed domain name for a website that is used to offer jackets bearing Complainant’s DUVETICA trademark, which are precisely the products marketed by Complainant under such trademark, constitutes an improper use of Complainant’s trademark and, where coupled with any lack of disclaimer disassociating Complainant from such website, is indicative of bad faith5 for purposes of the Policy.
This Panel considers that in using the disputed domain name in such way, Respondent has sought to create a likelihood of confusion with Complainant and its trademark as to the sponsorship or source or affiliation or endorsement of the website associated to the disputed domain name, when in fact there is no such connection.
In light of the above, this Panel finds that Complainant has satisfied 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, this Panel orders that the disputed domain name be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Dated: December 23, 2011
1 See Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 See Park Place Entertainment Corporation v. Mike Gorman,WIPO Case No. D2000-0699; SWATCH AG v. Stefano Manfroi,WIPO Case No. D2003-0802; Espire Infolabs Pvt. Ltd. v. TW Telecom,WIPO Case No. D2010-1092.
3 See Intocast AG v. Lee Daeyoon,WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”; also, Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”.
4 Complainant asserted that its trademark is distinctive (which Respondent did not rebut) since it is an innovative play on words with the word “duvet”. However, Complainant provided no further explanation on that subject (it is not this Panel’s role to ellaborate arguments on behalf of the parties; this Panel understands Complainant tried to refer to the material used in Complainant’s jackets, i.e. “down” in English).
5 See Houghton Mifflin Co. v. The Weathermen, Inc.,WIPO Case No. D2001-0211.
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