The Complainant is Calzedonia S.p.A. of Verona, Italy, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Mateo Jan(Jaén) Vinad of Elche, Alicante, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2013. On June 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 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 June 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2013.
The Center appointed Michel Vivant as the sole panelist in this matter on July 9, 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
The Complainant Calzedonia S.p.A. is the owner of various trademarks CALZEDONIA for clothing, mainly underwear and swimwear, in different countries or set of countries as Canada, Russian Federation, United States of America or European Union. It also registered various domain names including the trademark CALZEDONIA and also domain names with misspelled words such as Calzedona or Calzadonia. It owns a franchising network consisting of more than 1,400 shops through the world.
The Respondent registered the disputed domain name on February 6, 2006.
Consequently, the Complainant decided to file the Complaint before the Center, requesting the Panel to issue a decision that the disputed domain name be transferred to it. 5. Parties’ Contentions A. Complainant
The Complainant put forward the following arguments.
1) The disputed domain name is “phonetically and visually and conceptually” confusingly similar to the well-known trademark CALZEDONIA, the difference between the trademark and the disputed domain name being only two letters which is negligible.
2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as far as the Respondent is not known under the name “Calzadona”, is not a member of the franchising network of the Complainant and has no link with him. Furthermore it must be observed that the disputed domain name directed Internet users to a “parking website”.
3) The disputed domain name was registered and is being used in bad faith as far as the choice of it must be understood as aiming to attract and divert customers by creating initial confusion with the Complainant’s well-known trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Concerning the first requirement, it is well established that “typosquatting” can constitute confusing similarity for purposes of paragraph 4(a)(i) of the Policy. And, while the typosquatting cases are usually cases where the misspelling concerns only one letter, here the disputed domain name differs from the Complainant’s trademark by two letters, which is not a determining factor. The typosquatting can consist of misspelling of two letters as previous UDRP panels have decided (see for example FragranceX.com, Inc. v. Argosweb Corp a/k/a Oleg Techino in this name and under various aliases,WuWeb Pty Ltd, Alichec Inc., Belroots Pty Ltd, Crystal Image Pty Ltd, Elarson & Associates Pty Ltd, Lidnick Webcorp, Liquid SEO Limited, Loshedina Inc, Luchichang Pty Ltd, Netmilo Pty Ltd, Orel Hlasek LLC, Volchar Pty Ltd, Web Pescados LLC, Webatopia Marketing Limited, ZincFusion Limited, Chin-Hui Wu, Domain Administrator, Denholm Borg, Denesh Kumar, Marcelos Vainez, Alex Ovechkin, Vlad Obchikov, WIPO Case No. D2010-1237).
More, UDRP panels apply a “low threshold” test for confusing similarity under the first element of the Rules and the true question is to know whether the domain name “approximates [the trademark], visually or phonetically, so that the domain name on its face is ‘confusingly similar’ to the mark” (Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services,WIPO Case No. D2007-1743).
In this case, the approximation is indisputable. From the perceptive, phonetic, visual, and intellectual point of view the trademark and the disputed domain name are confusingly similar. “Calze” means stockings in Italian. Also, in this Panel’s view “Donia” and “Dona” clearly are from the same register (and in Spanish the pronunciation of “Dona” with a tilde is the same as “Donia”). The difference between “Calze” and “Calza” is, if not nonexistent, very small. Moreover, it is remarkable that, as a precaution and anticipating some possible cybersquatting behaviors, the Complainant registered the domain names that incorporate “Calzedona” or “Calzadonia”.
So, in the view of the Panel, the disputed domain name is confusingly similar to the Complainant’s trademarks according to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
It appears that the Respondent is not known under the name “Calzadona”. He does not own a trademark or a trade name “Calzadona” as far as the Panel is aware. He is not a member of the franchising network of the Complainant and has no link with the Complainant.
Furthermore, the disputed domain name has no real function, other than to direct the Internet users to a “parking website”, which cannot be considered as a bona fide, or legitimate noncommercial or fair use of the disputed domain name. It denotes the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel thus finds that the Respondent has no rights or legitimate interests in the disputed domain name according to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Respondent does not appear to have any specific good faith reason to register the disputed domain name which is close to the trademark of the Complainant. In this Panel’s view, the sole utility this registration can have is to attract consumers, misled by the proximity of the trademark and the disputed domain name.
The fact that the disputed domain name has been redirected to a parking website and then deactivated subsequent to the filing of the Complaint reinforces this observation. “Passive holding” of a domain name does not prevent the panel from finding bad faith registration and use. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2. In the circumstances of this case, the Panel finds that the “passive holding” of the disputed domain name by the Respondent indicates the Respondent’s bad faith in registering and using the disputed domain name.
The Panel therefore finds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii). 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.
Michel Vivant
Sole Panelist
Date: July 15, 2013
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