The Complainant is Dolce & Gabbana S.r.l. of Milan, Italy, represented by Studio Turini, Italy.
The Respondent is Wang Lifang of Qujing, Yunnan, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2013. On June 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 20, 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 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 Peter J. Dernbach as the sole panelist in this matter on July 30, 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 designers Domenico Dolce and Stefano Gabbana, founders of the “Dolce & Gabbana” brand. The Complainant is an Italian company and the exclusive worldwide licensee of the DOLCE & GABBANA trademark and entitled to act in order to recover and register, in the Complainant’s name, Internet domain names. The DOLCE & GABBANA trademark has been registered in many countries, inter alia:
1. DOLCE & GABBANA, Italian trademark, No. 372387, filed on July 26, 1985, renewed on June 15, 2005.
2. DOLCE & GABBANA, International Trademark, No. R555568, registered on February 14, 1990.
3. DOLCE & GABBANA, International Trademark, No. 625152, registered on July 13, 1994.
According to WhoIs data, the Respondent is Wang Lifang. The Disputed Domain Name was registered on February 18, 2013.
The Registrar confirmed, in its email of June 20, 2013, that the Registration Agreement for the Disputed Domain Name is in English. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions could be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Name is composed of the same root of the Complainant’s trademark, with the added suffix “fashion” which does not diminish the likelihood of confusion with the Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant is the exclusive licensee of the DOLCE & GABBANA trademark. The Respondent was not authorized, licensed, or otherwise allowed by the Complainant or by the owner of the trademark to use the name “dolcegabbana”, or to apply for any domain name incorporating its trademark. The Respondent is not commonly known by that name, either.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The DOLCE & GABBANA trademark is a famous trademark around the world. Thus, it is hard to believe that the Respondent was not aware of the existence of the Complainant’s trademark and reputation before registering the Disputed Domain Name. The registration of the Disputed Domain Name prevents the Complainant from reflecting its mark in a corresponding domain name, considering that the Disputed Domain Name is a “.com” domain name, the most common on the Internet. In fact, the Disputed Domain Name was selected by the Respondent with clear intent for commercial gain, achieved by using it to sell counterfeit products of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Language of Proceeding
Paragraph 11(a) of the Rules provides that “[u]nless 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.”
The Registrar confirms that the Registration Agreement is in English.
The Complainant’s Complaint is filed in English and consistent with paragraph 11(a) of the Rules, the language of the proceeding shall be English. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
Paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) summarizes the consensus view of UDRP panels regarding whether a licensee of a trademark has rights in a trademark for the purpose of filing a UDRP complaint, whereby:
“In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding.[...]”
The Complainant has produced registration certificates of the trademarks herein and a letter from the owner of the trademarks establishing that the Complainant is the exclusive worldwide licensee of the DOLCE & GABBANA trademark and entitled to act in order to recover and register, in the Complainant’s name, Internet domain names. Therefore, the Panel finds that the Complainant has rights in the DOLCE & GABBANA trademarks sufficient to file this UDRP Complaint.
The Disputed Domain Name, , incorporates the distinctive portion of DOLCE & GABBANA trademark, “dolce” and “gabbana”, with a word “fashion” and the top-level suffix “.com”. The word “fashion” is a generic and descriptive term. The “dolce” and “gabbana” elements are still immediately recognizable as the Complainant’s trademark. In the Panel’s view, the addition of other descriptive and generic terms does not mitigate the likelihood of confusion between the Disputed Domain Name and the Complainant’s trademark. (J. Choo Limited v. Weng Huangteng,WIPO Case No. D2010-0126; J. Choo Limited v. Hui Wang aka Wang Hui,WIPO Case No. D2010-0534).
As for the applicable top-level suffix such as “.com” in the Disputed Domain Name, it is a consensus view that it may usually be disregarded under the confusing similarity test (MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598; also see paragraph 1.2 of the WIPO Overview 2.0).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby:
“[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. […].” (See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill,WIPO Case No. D2010-1284).
The Complainant has established that it is the exclusive worldwide licensee of the DOLCE & GABBANA trademark. It further claims that the Respondent is not authorized, licensed or otherwise allowed by the Complainant or the trademark owner to use the DOLCE & GABBANA trademark or to register the Disputed Domain Name.
The Complainant has produced a counterfeit report by the DOLCE & GABBANA trademark owner claiming that the Respondent’s products are counterfeit. The screenshots of the web site under the Disputed Domain Name provided by the Complainant show that the Respondent uses the DOLCE & GABBANA trademark to sell coats, bags and shoes but does not actually and prominently disclose the Respondent’s relationship with the Complainant. This is clearly use for commercial gain and the Panel need not decide whether the goods sold on the web site are genuine as the Respondent cannot claim rights or legitimate interests to the Disputed Domain Name when it fails to accurately and prominently disclose the relationship between the parties thereby confusing Internet users. (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Furthermore, “Dolce” and “Gabbana” are Italian family names and has no specific meaning in Chinese. According to the WhoIs database, the name of the Respondent has no connection to these names. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the names “Dolce” and “Gabbana”.
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. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not provide any allegation or evidence indicating that it has rights or legitimate interests in the Disputed Domain Name and there is therefore no evidence in the case file to suggest that the Respondent has rights or legitimate interests in the Disputed Domain Name under any conditions of paragraph 4(c) of the Policy or otherwise.
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The Complainant’s trademark has been registered in many countries in the world and was well known in many countries prior to the date the Disputed Domain Name was registered in 2013. The Respondent chose the DOLCE & GABBANA trademark as the only distinctive part of the Disputed Domain Name. According to the screenshots of the web site under the Disputed Domain Name in Annex 11 to the Complaint, the Respondent uses the DOLCE & GABBANA trademark to sell coats, bags and shoes. It is obvious that the Respondent registered the Disputed Domain Name with knowledge of the Complainant’s trademark. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the “dolce” and “gabbana” string with the other generic word for any reason other than the reputation of the Complainant’s trademark. Such intentional registration shows the bad faith of the Respondent. The Panel finds that the Disputed Domain Name has been registered in bad faith.
The Respondent uses the DOLCE & GABBANA trademark on the front page of the web site to which the Disputed Domain Name resolves. The web site sells coats, bags and shoes under the DOLCE & GABBANA trademark. There is no indication that accurately and prominently discloses the Respondent’s relationship with the Complainant. The Respondent has intentionally designed the web site under the Disputed Domain Name to create an impression to Internet users that they are affiliated, endorsed or sponsored by the Complainant for selling its own products. Therefore, the Panel finds that the Disputed Domain Name is being used in bad faith.
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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.
Peter J. Dernbach
Sole Panelist
Date: August 8, 2013
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