The Complainant is Dolce & Gabbana S.r.l. of Milan, Italy, represented by Studio Legale Turini, Italy.
The Respondent is Designer Time, Robert Law of Shropshire, United Kingdom of Great Britain and Northern Ireland (the “UK”), representing itself. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2012. On January 20, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same date, Tucows 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 January 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2012. The Response was filed with the Center on February 14, 2012.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on February 23, 2012. 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 the exclusive licensee of the following registered trademarks:
- DOLCE & GABBANA, Italian trademark no. 372387 renewed with the trademark no. 1134881.
- DOLCE & GABBANA (design), International trademark no. 555568.
- DOLCE & GABBANA (design), International trademark no. 625152
- DOLCE & GABBANA (design), International trademark no. 666432
- DOLCE & GABBANA, Community trademark no. 000454066
- DOLCE & GABBANA (design), Community trademark no. 001842079
The disputed domain name was registered on December 17, 2005. 5. Parties’ Contentions A. Complainant
The Complainant is the exclusive licensee of numerous DOLCE & GABBANA trademarks world wide. In the field of fashion, the DOLCE & GABBANA trademark is one of the most famous trademarks, and it’s a generally well-known trademark world wide. The trademark is also used in the Complainant’s company name.
The disputed domain name is confusingly similar to the trademarks to which the Complainant holds rights and it is composed by the same root as the trademarks and the Complainant’s domain name, “dolcegabbana”, with the added suffix “jewellery”. The suffix is clearly describing of the field in which the Complainant is known which increases the likelihood of confusion.
The Respondent has no rights or legitimate interest in the disputed domain name. Neither by the Complainant nor by the owner of the trademark has the Respondent been authorized, licensed or otherwise allowed to use the name “dolcegabbana” under any circumstances. The Respondent is not commonly known by the disputed domain name.
The disputed domain name was registered and is being used in bad faith since the Respondent should have had knowledge about the registrations and use of the trademark prior to the registration of the disputed domain name. It is not likely that the Respondent was not aware of the existence of the trademarks and their reputation before registering the disputed domain name. If the Respondent only had typed the words “dolce gabbana” or “dolce gabbana jewellery” in a Internet search engine, it would have realized that it is a world wide famous trademark. The disputed domain name is not used in connection with a bona fide offering of goods or services. There is no webpage linked to the disputed domain name. The Respondent has acquired the domain with clear intent for commercial gain. This is proven by its statement that EUR 300 would not be worth selling for, but that it would consider GBP 10,000. B. Respondent
The Respondent has owned the disputed domain name since November 2005. In that time the Respondent has been purchasing DOLCE & GABBANA jewellery and watches from the official UK distributors and has become one of the UK’s leading retailers of these products. The Complainant has not previously raised any objections to the Respondent’s use of the disputed domain name or sales of its products. Their objection to the Respondent’s ownership of the disputed domain name is connected to the Complainant’s decision to withdraw from their distribution arrangements in the UK and instead distribute watches and jewellery themselves. If the Complainant had a genuine complaint it should have raised it before now. 6. Discussion and Findings
The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. 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 (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
The Complainant has relied on the registrations of the DOLCE & GABBANA trademarks and its exclusive license agreement with the owner of the trademarks. The Panel finds that the Complainant has proved its right to the DOLCE & GABBANA trademark by the submitted trademark certificates and license agreement. The fact that the Complainant operates under the “Dolce & Gabbana” name is persuasive to the Panel as well (see Teva Pharmaceutical USA, Inc. v. US Online Pharmacies,WIPO Case No. D2007-0368; see also Komatsu Deutschland GmbH v. Ali Osman / ANS,WIPO Case No. D2009-0107). Further, the Panel finds that the Complainant acquired its rights to the trademarks before the application of transfer of the disputed domain name was filed.
In accordance with the consensus view, the Panel does not regard the top-level suffix “.com” when deciding if the disputed domain name is identical or confusingly similar to the Complainant’s trademark. In accordance with this, the disputed domain name and the registered trademark DOLCE & GABBANA only differ by the generic, and of the Complainant’s business descriptive, word “jewellery” and the symbol “&”.
The Panel finds that the incorporated parts of the trademark “dolce” and “gabbana” constitute the most distinctive element of the disputed domain name and that the addition of the generic and descriptive word to the trademark is insufficient to avoid a finding of confusing similarity under the first element of the Policy (see Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168). On the contrary, the addition of the word “jewellery” to the DOLCE & GABBANA trademark only increases the likelihood of confusion since it is a descriptive word of parts of the goods provided under the trademark. Further, the Panel finds that the removal of the trademark’s “&” symbol from the disputed domain name is not sufficient to avoid confusion.
In accordance with the findings above, the Panel concludes that the disputed domain name is confusingly similar to the DOLCE & GABBANA trademark, to which the Complainant holds rights, in the meaning of paragraph 4(a)(i) and the first element of the Policy is thus fulfilled. B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden shifts to the Respondent to prove its rights or legitimate interests.
The Complainant has stated that the Respondent lacks rights to use the name “dolcegabbana” and that it is not known by the disputed domain name. The Respondent, as the Panel understands its response, has argued that the Respondent’s many years of ownership of the disputed domain name, it being a retailer of the Complainant’s products and the Complainant’s lack of previous actions to acquire it, entails rights or legitimate interests in the disputed domain name for the Respondent.
The Panel finds, based on the evidence provided on the record, that the Respondent is not commonly known by the disputed domain name. Also, the Panel finds that the Complainant, by the exclusive license agreement submitted, has made a prima facie case that the Respondent lacks rights or legitimate interests.
The burden of production is thereby placed on the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. In accordance with the consensus view, the Panel finds that the Respondent’s long ownership of the disputed domain name and its status as a retailer is not enough to meet this burden. For a retailer to obtain a legitimate interest in a disputed domain name it must meet certain requirements. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 2.3 states that: “These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder.” Since it has not been proven that there is any website linked to the disputed domain name and due to the lack of other evidence submitted that would prove the Respondent’s rights or legitimate interests, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
The Panel notes that the registration of the DOLCE & GABBANA trademark was made long before the registration of the disputed domain name.
As mentioned above, there are no indications that the disputed domain name is used for a bona fide offering of goods and services. From the statements in the Response, it is clear that the Respondent had knowledge of the DOLCE & GABBANA trademark at the time of the registration of the disputed domain name. The e-mails submitted by the Complainant, in which the Respondent declares that it would consider to sell the disputed domain name for GBP 10,000, clearly indicates that the Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant, the owner or a competitor to one or both of them for valuable consideration in excess of the Respondents out-of-pocket costs directly related to the disputed domain name. No evidence has been submitted that proves otherwise.
In accordance with what is mentioned above, the Panel finds that the third element of the paragraph 4(a) of the Policy is fulfilled. 7. Decision
For all 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.
Jonas Gulliksson
Sole Panelist
Dated: March 6, 2012
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