The Complainant is Interbasic Holding S.A. of Luxembourg, Luxembourg, represented by Studio Turini, Italy.
The Respondent is liujingguo of Shandong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xiamen eName Network Technology Corporation Limited dbaeName Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which to some extent differed from the named Respondent and contact information in the Complaint. The Center sent a Request for Amendment email to the Complainant on February 21, 2012 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 21, 2012. On February 15, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On February 16, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
The Center verified that the Complaint together with the amended 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 February 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2012. The Center has received email communications from the Respondent dated March 8, 2012. The Respondent did not submit any response by the response due date. Accordingly, the Center notified the parties of the proceeding update on March 14, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 27, 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, Interbasic Holding S.A. is the exclusive owner of numerous SCHIAPARELLI trademarks.
Elsa Schiaparelli was a famous fashion designer, very respected in the field of fashion and haute culture since the early 1950’s. Among her clients were Greta Grabo, Wallis Simpson and Mae West.
In 2008, the “Victoria and Albert Museum” of London dedicated an exhibition to “The Golden Age of Couture”, with an entire section dedicated to Elsa Schiaparelli. Also, the "Metropolitan Museum of Art" of New York is scheduled to unveil on May 10, 2012, an exhibition relating to Elsa Schiaparelli.
The Complainant is the exclusive owner of numerous worldwide trademark registrations for the mark SCHIAPARELLI. For example: International trademark registration No. 941394 – SCHIAPARELLI, with the registration date of May 8, 2007, designated to, among other: Switzerland, China, Cyprus, Egypt, Croatia and the United States of America; International trademark registration No. 169228 – SCHIAPARELLI (logo), with the registration date of May 11, 1953, designated, among others, to: Austria, Switzerland, Czech Republic, Germany, Spain, Hungary, Italy, Romania, Serbia and Montenegro; International trademark registration No. 435913 – SCHIAPARELLI (logo), with the registration date of February 3, 1978, designated, among others, to: Austria, Switzerland, Germany, Egypt, Spain, Hungary, Italy, Portugal, Romania and Serbia; Community trademark registration No. 5894753 – SCHIAPARELLI, with the registration date of April 30, 2007; Community trademark registration No. 5934708 – SCHIAPARELLI (logo), with the registration date of May 15, 2007, and more.
The Complainant is also the owner of the Community trademark registration No. 5951868 – ELSA ES(logo), with the registration date of May 21, 2007.
The Complainant also developed a presence on the Internet and is the owner of which contains the mark – SCHIAPARELLI.
The disputed domain name was registered on March 10, 2010.
The disputed domain name resolves to an inactive webpage. 5. Parties’ Contentions A. Complainant
The Complainant argues the disputed domain name is confusingly similar to its SCHIAPARELLI trademark.
The Complainant further argues the addition of the name “Elsa” is not sufficient to avoid the similarity between the disputed domain name and the Complainant's SCHIAPARELLI trademark. The Complainant contends that the addition of the name "Elsa" increases the likelihood of confusion.
The Complainant further argues the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further argues the Respondent was not authorized, licensed or otherwise allowed by the Complainant to use the SCHIAPARELLI trademark along with the name “Elsa”, nor to apply for any domain name incorporating its trademark.
The Complainant further argues that the Respondent failed to prove legitimate use of the disputed domain name. Furthermore, the disputed domain name is likely to lead consumers to believe that it is connected with the Complainant.
The Complainant further argues the disputed domain name was registered and is being used in bad faith.
The Complainant further argues the Respondent registered the disputed domain name with knowledge of the Complainant's SCHIAPARELLI Trademark.
The Complainant further argues that there is no evidence of any good faith use of the disputed domain name. The Complainant contends that the Respondent is not offering any goods or services to justify the use of the disputed domain name.
The Complainant further argues that the Respondent’s passive holding of the disputed domain name constitutes bad faith use. Moreover, the Respondent’s use is preventing the Complainant from reflecting its trademark in a corresponding domain name.
The Complainant further argues that the Respondent's failure to respond to the Complainant’s communication also indicates bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not file a formal response to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (GroupeAuchan v. xmxzl,WIPO Case No. DCC2006-0004).
Upon deciding on the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name consists of English characters, spelling the name "Elsa Schiaparelli";
b) The Complaint was submitted in English;
c) The Respondent did not object to the Complainant's request that English be the language of proceedings.
d) Adopting Chinese as the language of the proceeding will result in undue expenses and delay;
Considering that the Complainant requested that English be the language to be used in this proceeding, the fact that the disputed domain name consist of English characters and that the Center notified the Respondent in both English and Chinese and taking into account the Respondent's default, the Panel concludes that, according to the Rules, paragraph 11(a), the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding shall be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the exclusive owner of numerous worldwide trademark registrations for the mark SCHIAPARELLI. For example: International trademark registration No. 941394 – SCHIAPARELLI, with the registration date of May 8, 2007, designated to, among other: Switzerland, China, Cyprus, Egypt, Croatia and the United States of America; International trademark registration No. 169228 – SCHIAPARELLI (logo), with the registration date of May 11, 1953, designated, among others, to: Austria, Switzerland, Czech Republic, Germany, Spain, Hungary, Italy, Romania, Serbia and Montenegro; International trademark registration No. 435913 – SCHIAPARELLI (logo), with the registration date of February 3, 1978, designated, among others, to: Austria, Switzerland, Germany, Egypt, Spain, Hungary, Italy, Portugal, Romania and Serbia; Community trademark registration No. 5894753 – SCHIAPARELLI, with the registration date of April 30, 2007; Community trademark registration No. 5934708 – SCHIAPARELLI (logo), with the registration date of May 15, 2007, and more.
The Complainant is also the owner of the Community trademark registration No. 5951868 – ELSA ES(logo), with the registration date of May 21, 2007.
The disputed domain name differs from the SCHIAPARELLI trademark by the additional name “Elsa” and an additional gTLD suffix “.com”.
The disputed domain name integrates the Complainant's SCHIAPARELLI trademark in its entirety, as a dominant element. The name “Elsa” does not serve sufficiently to distinguish or differentiate this disputed domain name from the Complainant’s SCHIAPARELLI trademark, especially as it represents Elsa Schiaparelli’s first name, and it is confusingly similar to the Complainant’s ELSA ES(logo) trademark, in which the Complainant has proved to have rights.
Previous UDRP panel decisions have found that the combination of two trademarks in a domain name can, under certain circumstances cause a likelihood of confusion, as both elements of such domain name, and their combination, can be understood as a reference to a complainant indicating the source and origin of the products and services at issue (see A. P. Møller v. Web Society,WIPO Case No. D2000-0135; Audi AG v. Hans Wolf, WIPO Case No. D2001-0148; Saab Automobile AB et al. v. Joakim Nordberg, WIPO Case No. D2000-1761; Société des Produits Nestle SA v. Stuart Cook, WIPO Case No. D2002-0118).
The extent to which the disputed domain name is considered identical or confusingly similar to the Complainant’s trademark is also determined by the distinctive nature of the name itself. In this case, the name “Elsa Schiaparelli” is distinctive, as it has no other dictionary meaning that is distinct from the Complainant’s SCHIAPARELLI trademark. This distinctiveness of the Complainant’s trademark further affirms that the disputed domain name is identical or confusingly similar to the Complainant’s mark. (See AT&T Corp v. William Gormally, WIPO Case No. D2005-0758). Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). It is established that, where a trademark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered trademark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
The addition of the gTLD ".com" to the disputed domain name does not avoid confusing similarity (See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD ".com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate Interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the SCHIAPARELLI nor the ELSA ES trademarks, or a variation thereof.
The Respondent has not submitted a formal response and the email communications did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the SCHIAPARELLI trademark since the year 1953. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Incv. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent's use of a highly distinctive trademark of the Complainant also suggests of the Respondent's bad faith. It was held in prior UDRP decisions that it is presumptive that using a highly distinctive trade mark with longstanding reputation is intended to make an impression of an association with the Complainant. (See Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司,WIPO Case No. D2007-0934, stating that: "the Panel finds that the DANFOSS trade mark, being a highly distinctive trade mark of a longstanding reputation, is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.")
Furthermore, the disputed domain name resolves to an inactive webpage. The Respondent had registered the disputed domain name, but did not put it to any use.
It was held in prior UDRP decisions held that passive holding of a domain names can, under certain circumstances, be considered bad faith use of the domain name (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and alayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393).
In the present case, the Panel will take the following circumstances into consideration when deciding if the Respondent's passive holding constitutes registration and use of the disputed domain name in bad faith:
a) The vast goodwill the Complainant achieved in its trademark;
b) The Complainant's trademark is a highly distinctive name;
c) The disputed domain name incorporated the Complainant's SCHIAPARELLI trademark as a whole;
d) The disputed domain name also incorporates the name "Elsa" which is confusingly similar to the Complainant's ELSA ES (logo) mark and is associated with the Complainant's SCHIAPARELLI trademark, as it is Elsa Schiaparelli first name.
Upon considering the above, it is determined by the Panel that the passive holding by the Respondent is considered bad faith.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant's trademarks, the passive holding of the disputed domain name by the Respondent and the identity between the disputed domain name and the Complainant’s marks, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: April 9, 2012
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