The Complainant is Dolce & Gabbana s.r.l., Milano, Italy, represented by Studio Turini, Italy.
The Respondent is Whitfield Leslie, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2013. On April 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2013, the Registrar 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 April 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2013.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on June 3, 2013. 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
Dolce and Gabbana are the last names of the two famous stylists Domenico dolce and Stefano Gabbana, founders of the Dolce & Gabbana maison in the mid 1980.
The Complainant is the exclusive licensee of numerous trademarks DOLCE & GABBANA.
Dolce & Gabbana is the Complainants company name.
DOLCE & GABBANA is a famous trademark in the world in the field of fashion and it is an extremely well-known trademark internationally
The disputed domain name was registered on October 1, 2012. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical to the Complainants trademark. The only difference between the Complainants’ trademark and website is the suffix “boutique”. The suffix does not extenuate the likelihood of confusion with the Complaiant’s mark on the contrary it increases the likelihood of confusion.
The Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent was not authorized licensed or otherwise allowed nor by the Complainant nor by the owners to use the name Dolcegabbana.
The Complainant asserts that the trademark DOLCE & GABBANA is a worldwide famous trademark, therefore it is hard to believe that Respondent was not aware of the existence and reputation of these trademarks prior to registering the disputed domain name. There is no reasonable evidence made by the Respondet in order to find out third parties rights in the disputed domain name. The Respondent would have only needed to type “dolce gabbana” on a search engine to realize that it is a world wide famous trademark.
The Complainant finally asserts that the Respondent is not offering a bona fide offering of goods or services”, it was only selected for commercial gain, achieved by reselling it at a considerable out-of-pocket amount. Evidence of the same is the fact that de disputed domain name is on sale for more than US D 2690.
The Complaint ends by stating that the forgoing circumstances are clearly indicative that the Respondent has no legitimate interest in the disputed domain name and that the disputed domain name has been registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names in question; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
1. The Panel finds that the Complainant has established that it is the exclusive licensee of the registered trademarks DOLCE & GABBANA based on the evidence provided by the Complainant (annex 4 of the Complaint).
2. The disputed domain name consists of the names “Dolce” and “Gabbana” with the addition of the word “Boutique”. The names Dolce and Gabbana together form the Complainants registered trademark, the other term is merely a generic term that does not provide any further distinctiveness to the domain name. The Panel considers that the addition of the generic denomination, especially when added to a famous trademark, is not sufficient to avoid confusion.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name in question.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden is shifted to the Respondent to prove the contrary.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name Dolce and Gabbana Boutique. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark DOLCE & GABBANA. There is no current relationship between the Complainant and the Respondent.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interest in the domain name.
In the absence of a response this Panel is satisfied that the Complainant has satisfied the second element, Paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interest in said domain name. C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrates that (1) the domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a nonexhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is composed of the word, “dolce” and “gabbana” and the additional word “boutique”. It is understood that when proceeding to the registration of a domain name, paragraph 2 of the Policy implicitly requires a good faith effort to avoid registering and using domain names corresponding to third-party trademarks. The onus is on the respondent to make the appropriate enquiries to ensure that the registration of the domain name does not infringe or violate third party rights.
Therefore, in this particular case one could presume that the Respondent registered the disputed domain name with no exploration whatsoever of the possibility of third-party rights, and with apparent disregard to whether the domain name it was registering was a domain name which corresponded to the distinctive trademark of another. However, it is impossible to conclude the above, maybe if the domain name was just comprised of a common Italian surname one could think that there was no bad faith involved, but registering coincidently two Italian surnames that are precisely the surnames of two famous stylist can only make this Panel conclude that the Respondent had complete knowledge of what he was doing. Furthermore, the disputed domain name was not only the names of two famous stylists but a protected and well-known trademark worldwide.
In addition to the above the disputed domain name referred to a famous trademark related to the world of fashion, and was precisely registered in conjunction with a term such as “Boutique”, which is precisely one of the places where one can go to buy the items sold with this trademark. Therefore, disputed domain name as a whole can only create a likelihood of confusion with the Complainants trademarks.
The Panel further considers that the Respondent’s objective by registering the disputed domain name was precisely 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 the Respondent’s website or of the services provided on the website.
Further more, the Panel considers that by registering a domain name corresponding to a well known trademark, the Respondent has intentionally tried to divert internet user’s to its webpage particularly to generate revenue. Evidence of the same has been provided by the Complainant in annex 14 to the Complaint, by which the disputed domain name is on sale for an out-of-pocket cost. This behavior constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting internet users to a webpage that does not correspond to what they are looking for.
Accordingly, for all the foregoing reasons, the Panel finds that the 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 disputed domain name be transferred to the Complainant.
Rodrigo Velasco Santelices
Sole Panelist
Date: June 7, 2013
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