The Complainant is Dolce & Gabbana s.r.l. of Milan, Italy represented by Studio Turini, Italy.
The Respondent is Domain ID Shield Service of Hong Kong, China / Misato Takahashi, bkt of Tokyo, Japan. 2. The Domain Name And Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (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 7, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 11, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 11, 2013.
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 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2013.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on May 13, 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” maision in the mid 1980’s. The Complainant is the exclusive licensee of Gado S.r.l who owns numerous trademarks including DOLCE & GABBANA internationally. The Complainant is the licensee of the various trademarks, inter alia, as follows:
DOLCE & GABBANA, Italian Trademark Registration No. 372387, filed on July 26, 1985 and duly renewed and remaining in force.
DOLCE & GABBANA, International Trademark Registration No. 555568, registered on February 14, 1990 and remaining in force.
The disputed domain name was created on October 4, 2012. The Respondent uses the disputed domain name to operate a website providing house rental information including sponsored links therefor. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- the disputed domain name is confusingly similar to a trademark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith.
- the disputed domain name should be transferred to the Complainant.
The Complainant seeks the transfer of the disputed domain name from the Respondent to the Complainant in accordance with paragraph 4(b)(i) of the Policy. B. Respondent
The Respondent did not reply to the 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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name be cancelled or transferred:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name registered by the Respondent has been registered and is being used in bad faith.
The Respondent provided no Response, and the deadline for doing so expired on May 2, 2013. Accordingly, the Respondent is in default. Taking the Respondent’s default into consideration, the Panel can infer that the Complainant’s allegations are true where appropriate to do so (Talk City. V. Michael Robertson,WIPO Case No. D2000-0009). Nonetheless, the Complainant retains the burden of proving the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence showing that it is the exclusive licensee of the registered mark DOLCE & GABBANA (hereinafter referred to as “Complainant’s mark”), the use and registration of which predate the Respondent’s registration of the disputed domain name. Previous UDRP panels have found that a licensee of a trademark is considered to have rights in a trademark under the UDRP in most circumstances (see Ingram Micro Inc. v. RJ, Inc. and Rick Juarez, WIPO Case No. D2001-0948; Komatsu Deutschland v. Ali Osman / ANS,WIPO Case No. D2009-0107). Coupling with the fact that DOLCE & GABBANA is also the Complainant’s company name, it is recognized that the Complainant has the right for the Complainant’s mark. The Panel recognizes from the materials the Complainant submitted that the Complainant’s mark is well-known. The notoriety will increase the likelihood of confusion.
The disputed domain name is confusingly similar to the Complainant’s mark DOLCE & GABBANA in that it incorporates the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark.”
The Panel finds that the additional word “esale” is a descriptive word used to refer to “e-sale” or “electronic sale”, and thus it does not constitute a prominent portion in the disputed domain name when determining the confusing similarity between the disputed domain name and the Complainant’s mark. Therefore, the addition of the word “esale” does not have any impact on the avoidance of confusion. See Research in Motion Limited v. Input Inc, Domain Manager, WIPO Case No. D2011-2197 finding “the additional word ‘help’ is an expression commonly used in the world to provide assistance.” For this reasons, the Panel concludes that the word “esale” is solely descriptive. The use of the added descriptive word does not change the overall impression of the disputed domain name as being dominated by the term “Dolce Gabbana” and does not serve to distinguish the disputed domain name from the Complainant’s mark.
The addition of the top-level domain “.com” also does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant when determining the confusing similarity between the Complainant’s mark and the disputed domain name.
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant must only show a prima facie case that there are no rights or legitimate interests on the part of the respondent. The burden of production will then shift to the respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has exclusive rights for the mark DOLCE & GABBANA and no license/permission/authorization was granted for the Respondent to use DOLCE & GABBANA in a domain name. The Panel recognizes that the disputed domain name is resolved to a website providing house rental information containing sponsored links for each of the relevant rental information. However, such use of the disputed domain name does not constitute any rights or legitimate interests on the part of the Respondent. See Sigikid H.Scharrer & Gmbh & Co.KG, MyBear Marketing-und Vertriebs Gmbh, Mr. Thomas Dufner v. Bestinfo,WIPO Case No. D2004-0990 finding “the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, e.g., from advertised pay-per-click products.”
As such, the Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Panel recognizes that the Complainant’s mark is a well-known trademark internationally in the field of fashion (see Dolce & Gabbana S.r.l. v. Domains by Proxy, Inc./ Renee Carr,WIPO Case No. D2011-0597; Dolce e Gabbana s.r.l. v. Agnes Varga,WIPO Case No. D2004-0482, Dolce Gabbana S.p.A v. Victory,WIPO Case No. D2001-1174). In light of the well-known status of the Complainant’s mark established well before the registration date of the disputed domain name, it is presumed that the Respondent registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s mark.. This is because it is unlikely that the Respondent would have registered the disputed domain name unless it was aware of the existence of the trademark DOLCE & GABBANA or that the disputed domain name might be of some type of economic advantage in association with the Complainant’s mark (see The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517).
Registration of the disputed domain name incorporating the well-known Complainant’s mark DOLCE & GABBANA by an entity that has no legitimate relationship with the Complainant itself demonstrates bad faith (Telstra Corporation Limited, v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel recognizes that the disputed domain name is resolved to a website providing house rental information in Japanese including sponsored links therefor. As such, the Panel infers that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to its website or its sponsored links, making them believe that the websites resolved by the disputed domain name and the websites behind those links are associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links. The Respondent is therefore illegitimately capitalizing on the reputation of the Complainant’s mark. See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., Inc.,WIPO Case No. D2005-0623 finding “[s]uch exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions.”
As such, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. 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.
Ho-Hyun Nahm
Sole Panelist
Date: May 23, 2013
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