The Complainant is Dillard's. Inc. of Little Rock, Arkansas, United States of America, represented by Brooks C. White, United States of America.
The Respondent is Pavol Icik of Bratislava, Slovakia. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2013. On June 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 10, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 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 June 18, 2013.
The Registrar having disclosed to the Center that Slovak was the language of the registration agreement as used by the Respondent for the Domain Name, on June 17, 2013, the Center transmitted an email to the parties in both Slovak and English language regarding the language of the proceeding. On June 18, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of proceedings by the specified due date (June 22, 2013) or at all.
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 June 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 26, 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 is a corporation organized under the laws of the State of Delaware, United States of America. It operates a clothing department store chain with over 300 retail locations in the United States of America. It is the proprietor of its own label brand of clothing, Antonio Melani.
The Complainant is the proprietor of various ANTONIO MELANI trade mark registrations in the United States of America, the earliest of which is a typed drawing mark dating back to 2001. The portfolio includes US registration no. 4010419 ANTONIO MELANI (standard character mark) filed July 23, 2010, registered August 9, 2011 in class 25 for hats.
The Domain Name was first registered by the Complainant on June 19, 2002 and held it until a date unknown in 2012 when the Complainant inadvertently allowed the registration to lapse. On a date unknown the Respondent subsequently acquired the Domain Name.
On May 29, 2013 the Complainant emailed the Respondent setting out the background and seeking transfer of the Domain Name. The Respondent responded by seeking USD 1500 for the Domain Name.
On June 6, 2013 the Domain Name was connected to a parking page offering links to a variety of websites mainly concerned with hotels and travel. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to its ANTONIO MELANI registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue – language of the proceeding
Paragraph 11(a) of the Rules provides as follows:
“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.”
In this case the language of the Registration Agreement is Slovak. As indicated in section 3 above, the Complainant has requested that the language of the proceeding be English. The Complainant states that it has no member of its staff capable of communicating in Slovak, whereas by contrast the Respondent has demonstrated in the email exchange between the parties (see section 4 above) that he is capable of both reading and writing in English. The Center invited the Respondent (in both Slovak and English) to comment on the Complainant’s language request, but the Respondent elected not to do so.
The Respondent has elected not to participate in any aspect of this proceeding in either Slovak or English and the Panel is satisfied that the Respondent will suffer no disadvantage if the language of the proceeding is English. The Panel determines that English be the language of the proceeding. B. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. C. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s registered trade mark, ANTONIO MELANI, (absent the space) and the “.com” generic top level domain identifier.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
The Complainant has demonstrated to the satisfaction of the Panel that the Domain Name is substantially identical to the Complainant’s trade mark, ANTONIO MELANI. “Antonio Melani” is an unusual name and for the Respondent to have a right or legitimate interest in respect of it, one would expect to see something in the Registrar’s WhoIs record for the Domain Name or the website to which the Domain Name is connected showing the Respondent’s connection with the name.
However, the Respondent is not named “Antonio Melani” and there is nothing on the Respondent’s webpage annexed to the Complaint showing any such connection.
The Complainant states that it has granted the Respondent no permission to use its trade mark for this or any other purpose and asserts on belief that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Moreover, the Complainant has drawn the Panel’s attention to two other UDRP cases in which the Respondent has been found to be in possession of domain names featuring the trade marks of others, namely ICICI Prudential Life Insurance Corporation Limited v. Privacy protect/Pavol Icik,WIPO Case No. D2012-2521 involving the domain name with ICICI Prudential being the name of the complainant and La Fee v. Pacol Icik/Privacy Protect,WIPO Case No. D2013-0526 involving the domain name with LA FEE MARABOUTEE being a trademark of the complainant.
The Panel is satisfied that the Complainant has made out a prima facie case against the Respondent, which calls for an answer. In the absence of an answer and there being no reason obvious to the Panel why the Respondent could be said to have any rights or legitimate interests in respect of the Domain Name, the Panel finds that the Respondent has no such rights or legitimate interests. E. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Name for the purpose of riding on the back of the fame of the Complainant’s ANTONIO MELANI trade mark to attract visitors to the Respondent’s pay-per-click parking page. The Panel agrees and gratefully adopts the finding of the learned UDRP panel in La Fee v. Pacol Icik/Privacy Protect, supra against the same Respondent:
“Respondent’s use of a website associated with the disputed domain name and which provides click-through opportunities are actions taken by Respondent to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s LA FEE MARABOUTEE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This established activity is a direct violation of paragraph 4(b)(iv) of the Policy, and is evidence of bad faith registration and use. See also MpireCorporation v. Michael Frey,WIPO Case No. D2009-0258 (“while the intention to earn click-through revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through revenue is found to be bad faith use”): Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364 (finding that using the domain name as a parking page with pay-per-click links to third party websites may be evidence of bad faith when the registrant is using the domain name in this manner because of the similarity to the complainant’s trademark in the hope and expectation that the similarity will lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page).”
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv). 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.
Tony Willoughby
Sole Panelist
Date: July 29, 2013
Full & Egal Universal Law Academy