The Complainant is Etro S.p.A., Milan, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Salon Etro (recently renamed Mikhail Corporation), Scottsdale, Arizona, United States of America ("US" or "USA"). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Wild West Domains, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2012. On February 29, 2012, the Center transmitted by email to Wild West Domains, LLC. a request for registrar verification in connection with the Disputed Domain Name. On February 29, 2012, Wild West Domains, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed only by the named Respondent in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 7, 2012. The Center verified that the Complaint together with the amendment to 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 March 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2012. No response was received, the Notification of Respondent Default was sent on March 29, 2012. Due to an administrative oversight the Notification of Complaint was not copied to an additional email address provided in the Annexes of the Complaint. In the interest of the process, the center granted the Respondent with an additional ten (10) days, until April 9, 2012, in order to indicate to the Center by return email whether it intended to participate in the proceedings. No reply or communication was received from the Respondent or from the email address.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 3, 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 trade mark on which the Complaint is based is ETRO. The Complainant is a company which conducts business in the fashion industry and its goods are marketed and promoted worldwide under the ETRO trade mark. In addition to clothing, the Complainant also markets and sells other products, including perfumes and body care products using the ETRO mark. Products bearing the ETRO trade mark are currently being sold in almost 90 countries and the Complainant has stores throughout the world, including Italy, France, Switzerland, United Kingdom of Great Britain and Northern Ireland, Netherlands, Germany, Spain, Japan, Republic of Korea, China, Singapore, India, the United Arab Emirates, Saudi Arabia, Canada, Mexico, and US where it has boutiques located in New York, Los Angeles, Miami and Manhasset.
The Complainant obtained its first trade mark registration for ETRO on July 26, 1975 with the Madrid System for the International Registration of Trade Marks ("First Registration"). In addition, the Complainant is the owner of over 300 national and international trade mark applications and registrations for or incorporating the ETRO mark. The Complainant has a US trade mark registration for ETRO in class 3 (cosmetics, make-up products, perfumes, hair shampoos, hair lotions, dentifrices, bath products) dated May 13, 1986 ("US registration") in addition to 12 applications and registrations in various other classes. The Complainant is also the registrant of many domain names incorporating the ETRO trade mark, including , , , and .
The Respondent is a company incorporated in the State of Arizona, USA in the business of providing hair salon services. The Disputed Domain Name was registered on November 5, 2009. On February 8, 2007 (prior to the registration of the Disputed Domain Name), the Respondent incorporated a company under the name Salon Etro Corporation. Following the receipt of a cease and desist letter from the Complainant (as discussed below), the Respondent changed its company name from Salon Etro Corporation to Mikhail Corporation.
At the date of filing this Complaint, the Disputed Domain Name resolved to a website for the "Salon Mikkail" hair salon, advertising a variety of beauty services, including haircuts, waxing, nail care and skin treatments as well as making reference to hair care products (the "Website"). 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant's ETRO mark, in which the Complainant has rights:
(i) the Complainant is the owner of the famous and well known ETRO trade mark, both in the US and worldwide and uses the domain name (amongst others);
(ii) the Disputed Domain Name comprises of the ETRO mark, the English word "salon" and the generic domain name suffix ".com";
(iii) the only difference between the ETRO mark and the Disputed Domain Name is the inclusion of the word "salon" (which is descriptive of the Respondent's business) and the addition of the term "salon" to the Complainant's trade mark cannot counteract the impression that any website linked to the Disputed Domain Name is likely to be operated or endorsed by the Complainant; and
(iv) many panelists have held that incorporating a trade mark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered trade mark.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) the Complainant has never licensed or authorised the Respondent to use the Complainant's distinctive trade mark;
(ii) the Respondent does not have any rights or lawful interests in the ETRO trade mark;
(iii) there is no evidence that the Respondent has trade mark registrations for ETRO;
(iv) the Respondent cannot use as a defense the fact that its former company name was "Salon Etro" as this was clearly chosen to trade off the Complainant's goodwill in its ETRO mark;
(v) the Respondent effectively acknowledged trade mark infringement when agreeing to change its company name and the Respondent subsequently changed its company name so as to remove any reference to the ETRO mark; and
(vi) the Respondent is not using the Disputed Domain Name in USA in association with noncommercial activity.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) the Respondent knew or should have known of the Complainant's activities and trade mark when registering the Disputed Domain Name:
- the ETRO mark is distinctive and the fact that the Respondent has registered a domain name that is confusingly similar to it indicates that the Respondent had knowledge of the Complainant's trade mark at the time of registration of the Disputed Domain Name;
- the ETRO trade marks are worldwide renowned marks and a basic Google search in respect of ETRO would have yielded obvious references to the Complainant and its use of the ETRO trade mark;
- the Respondent's disregard of the Complainant's rights in the ETRO trade marks when registering the Disputed Domain Name supports a finding of registration in bad faith;
(ii) the Disputed Domain Name is not used for any bona fide offerings as the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website;
(iii) Internet users may objectively believe that the Respondent has a connection with the Complainant, which is not the case;
(iv) the Respondent is dealing in competing products and therefore is redirecting Internet users to a website of the Complainant's competitors through the registration and use of the Disputed Domain Name;
(v) the Complainant has made no other use of the Disputed Domain Name other than attempting to resell it to the Complainant for US$ 500,000 (an amount which exceeds the Respondent's expenses in relation to the Disputed Domain Name); and
(vi) even if the selling of the Disputed Domain Name was not the primary purpose of registration, the Respondent has been guided into making easy profit out of the Disputed Domain Name by reselling it to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the ETRO trade mark on the basis of its registrations in various countries across the world.
The Panel accepts that the Disputed Domain Name incorporates the Complainant's ETRO trade mark in its entirety. The only difference between the Disputed Domain Name and the Complainant's mark is the former's inclusion of the generic term "salon" as a preffix. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only variation is the addition of a generic word, such variation does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/Blue H - INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinessclaim,WIPO Case No. D2009-0679; The Coca-Cola Company v. WhoIs Privacy Service,WIPO Case No. D2010-0088; and Missoni S.p.A. v. Ahmed Salman,WIPO Case No. D2007-1485). The Panel accordingly finds that ETRO is the distinctive and prominent component of the Disputed Domain Name, such that the addition of the term "salon" does nothing to distinguish the Disputed Domain Name from the Complainant’s ETRO mark.
Also, it is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com”, should be disregarded (Rohde & Schwartz GmbH & Co. KG v Pertshire Marketing Ltd,WIPO Case No. D2006-0762).
Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent is not connected or associated with the Complainant’s business and is not on any other basis licensed or authorised to use its ETRO mark. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the Respondent has the burden of proving that it does possess such rights or legitimate interests. As no Response has been submitted by the Respondent, the Panel will base its findings in this respect, on inferences that can be reasonably drawn from the Complainant's evidence.
The Panel accepts that the Complainant has not licensed or otherwise authorised the Respondent to use the ETRO trade mark.
The Panel finds that, although the Respondent has used the ETRO mark to carry on its business prior to the registration of the Disputed Domain Name, such use by the Respondent is not sufficient to create rights or legitimate interests in respect of the Disputed Domain Name. It was held in the previous case of Romec Limited v. Bradley Knight,WIPO Case No. D2006-1241 that even though the respondent may have legally registered, maintained or operated a business using the relevant mark prior to the registration of the Disputed Domain Name, whether the respondent has rights or legitimate interests in respect of the Disputed Domain Name depends on the inferences that can be drawn from the circumstances, including without limitation the length of time the mark has been used and how it was being used prior to the registration of the Disputed Domain Name, as well as the knowledge or motive of the Respondent at the time of selecting the mark to be used in its company name.
Given the following facts: the worldwide and long-standing fame of the ETRO trade mark including in the USA; the fact that the Complainant’s First Registration and US Registration predate the Respondent’s company registration by almost 30 years and 20 years, respectively; the fact that the Complainant has a business presence in the US (ie. 5 stores located in New York, Los Angeles, Miami and Manhasset); the fact that the Complainant has provided evidence that its ETRO brand has received publicity in numerous leading US publications; and the fact that the Respondent had no reason to select the ETRO mark (a made up word with no obvious connection to hair services) other than to draw an association with the Complainant's famous ETRO trade mark, the Panel finds that the Respondent was more likely than not aware of the Complainant’s rights in the ETRO mark when registering the Disputed Domain Name and using the Disputed Domain Name to advertise goods and services which are in some way connected to those of the Complainant (discussed in relation to bad faith below). This precludes a finding of noncommercial use or fair use of the Disputed Domain Name or use of the Disputed Domain Name in connection with a bona fide offering of goods or services (see Romec Limited v Bradley Knight,WIPO Case No. D2006-1241).
Accordingly, the Respondent needs to demonstrate that it has acquired rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy by virtue of the fact that it had become commonly known by the domain name. While there is evidence to suggest that the Respondent registered the Salon Entro Corporation company name in 2007, there is no evidence before the Panel indicating the time that the Respondent actually commenced business operations under the "Salon Etro" name. Therefore, the Panel is unable to determine whether the Respondent is commonly known by the Disputed Domain Name. In any event, as it has been held in at least one previous case was order/or the defence of being commonly known by a disputed domain name is typically not available where the respondent selected the disputed domain name with knowledge that the name is or includes a trade mark of another company (see Romec Limited v Bradley Knight, supra), a view with which the Panel agrees.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in bad faith.
As outlined above, the Panel accepts that the Respondent knew of the Complainant's ETRO trade mark at the time of registering the Disputed Domain Name. Evidence of bad faith includes actual or constructive notice of a well-known trade mark at the time of registration of a domain name by a respondent (see Samsonite Corporation v. Colony Holding, NAF Claim No. FA 94313). Given the degree of fame that the ETRO trade mark has acquired around the world, which the Panel accepts extends to the US, throughout the many years since its registration and use, the Panel accepts that the Respondent was aware of the Complainant’s ETRO trade mark at the time of registering the Disputed Domain Name and is using the Disputed Domain Name for the purpose of capitalising on the Complainant’s reputation and goodwill to generate profits, by attracting website customers who the Panel accepts would be drawn to the Website on the mistaken assumption that the Website and the Respondent's hair salon advertised via the Website were authorised by or connected with the Complainant (see GA Modefine v. [-], A's Administrative Contact,WIPO Case No. D2006-1351, where the panel held that the respondent, which had been operating a beauty and medical spa by incorporating the "Armani" mark in its company name, had selected the disputed domain name not by mere coincidence but by an intentional act to attract for commercial gain Internet users to the respondent's website by creating a likelihood of confusion with the complainant's mark). The Panel finds that there is no plausible explanation for the Respondent's use of the famous ETRO mark (an invented term with no specific connection to hair services) in its entirety other than to trade on the Complainant's goodwill in the ETRO mark (see RRI Financial, Inc. v Ray Chen,WIPO Case No. D2001-1242). In these circumstances the Panel finds that there is no basis on which to infer that the Respondent has used the Disputed Domain Name in any manner or for any purpose otherwise than in bad faith.
Even though the Complainant is a company operating primarily in the fashion industry, it also sells perfumes and body care products under the ETRO trade mark, and the Panel finds that there is sufficient connection between the businesses of the Complainant and the Respondent, that consumers are likely to be misled into thinking that Salon Etro and the Disputed Domain Name are associated or affiliated with the Complainant. The Panel also accepts that the Respondent's use of the ETRO mark in the Disputed Domain Name is likely to mislead Internet users searching for the Complainant's websites and redirect them to the Respondent's website, which promotes similar goods or services as those of the Complainant, and this constitutes bad faith in the registration and use of the Disputed Domain Name (see for example, NetWizards, Inc. v. Spectrum Enterprises,WIPO Case No. D2000-1768).
On February 22, 2011, the Complainant's attorneys sent a cease and desist letter to the Respondent informing it that its use of the ETRO trade mark constitutes an infringement of the Complainant's trade mark rights and requesting the Respondent ceases use of the ETRO mark, whether as the name of its business, on the Internet or otherwise. On March 25, 2011, the Respondent's attorney confirmed that the Respondent was willing to accept the Complainant's request and the Respondent subsequently changed its company name from Salon Etro Corporation to Mikhail Corporation on November 4, 2011 and changed the name of its salon from "Salon Etro" to "Salon Mikkail". The Panel accepts that this is an acknowledgement by the Respondent of the Complainant's rights in the ETRO trade mark, and the Respondent's failure to transfer the Disputed Domain Name to the Complainant under such circumstances (without the Complainant paying an exorbitant amount for the transfer, as discussed below) is further evidence of bad faith on the part of the Respondent.
In addition, following receipt of the cease and desist letter, the Respondent offered to sell the Disputed Domain Name to the Complainant for the exorbitant amount of US$ 500,000. Paragraph 4(b)(i) of the Policy states that where the respondent registered a domain name primarily for the purpose of selling the domain name to the complainant for an amount in excess of the respondent's out of pocket costs, this will be evidence of bad faith. While the Panel is not convinced that the Respondent registered the Disputed Domain Name for the primary purpose of selling it to the Complainant (given that the Respondent appears to have primarily registered the domain name for the purpose of drawing a false association between the Respondent's business and the Complainant's famous ETRO trade mark), the Panel is of the view that the Respondent's refusal to transfer the Disputed Domain Name to the Complainant following receipt of the cease and desist letter (and after the Respondent had changed its company name and business name, and had no apparent legitimate reason to retain the Disputed Domain Name) was motivated by the sole purpose of making undue profits from selling the Disputed Domain Name to the Complainant, which the Panel considers to be compelling evidence of the Respondent's use of the Disputed Domain Name in bad faith.
The Panel accepts that the fact that the Respondent refused to transfer the Disputed Domain Name to the Complainant unless it paid US$ 500,000 is further evidence of bad faith on the part of the Respondent.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Name. 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 the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: May 17, 2012
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