Complainant is Liu.Jo S.p.A. of Carpi, Italy, represented by Studio Legale SIB, Italy.
Respondent is Martina Hamsikova of Praha, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2013. On July 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 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 Respondent of the Complaint, and the proceedings commenced on July 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 14, 2013.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 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
Complainant is an Italian company active in the business of manufacturing, marketing and selling high-end articles of clothing and accessories. Complainant shows to be the holder of, inter alia, the following registered trademark, used in connection with complainant’s goods:
- LIU.JO (figurative), registered as a community trademark under number 000234351, on August 17, 1999 and covering goods in class 25; and
- LIU.JO (figurative), registered as a community trademark registration under number 000747923 on July 16, 1999 and covering goods in classes 9, 18 and 19.
The disputed domain name was created on February 25, 2013 and is registered by Respondent. Respondent is passively holding the disputed domain name, which resolves to a webpage that contains information about webhosting and domain name registration services in Czech. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the disputed domain name.
Finally, Complainant considers that the disputed domain name was registered and being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion And Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a LIU.JO trademark in which Complainant has rights. The trademark has been registered and used in various countries, including in the country where the Respondent is based.
The Panel considers the disputed domain name to be composed of a name that is confusingly similar to the LIU.JO trademark and the non-distinctive generic term “outlet”. The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software; International Business Machines Corporation v. Scott banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by the Complainant; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org. and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the addition of the words ““mail”, “post”, “fan” and “top50” to the word “pokemon” in the domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word “pokemon”; Nintendo of America Inc. v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word “games” in the domain name does nothing to reduce its confusing similarity with Nintendo’s POKÉMON marks; Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE).
Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of rebuttal on Respondent. (See, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the disputed domain name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In fact, Respondent is not making any use of the disputed domain name at all. According to the Panel, the passive holding or non-use of a domain name may, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the disputed domain name (See Credit Agricole S.A. v. Dick Weisz,WIPO Case No. D2010-1683; American Home Products Corporation v. Ben Malgioglio,WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci,WIPO Case No. D2000-1244; Paws, Inc. v. , NAF Claim No. 97328; Victoria’s Secret et al v. This Domain Name For Sale, NAF Claim No. 96486).
Finally, Respondent did not reply to Complainant’s arguments and decided not to take part in the administrative proceedings. This is a further indication of the absence of rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use are circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name, and the registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. The passive holding of a domain name can constitute bad faith use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, inconceivable good faith use, etc. (See e.g., Telstra Corporation Limited, supra; Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763).
In the present case, Respondent is passively holding the disputed domain name and failed to respond to the complaint, while it is inconceivable to this Panel that Respondent was unaware of Complainant and its trademark rights when it registered the disputed domain name. This is shown by the fact that the disputed domain name is composed of the LIU.JO trademark in its entirety together with non-distinctive elements that are related to the clothing business in which Complainant is active. Hence, it is apparent that Respondent had Complainant in mind when registering the disputed domain name.
Finally, the Respondent has registered several domain names containing well-known third parties’ trademarks in the field of fashion including , , which appear to have been registered with the goal to be sold. According to the Panel, this evidences bad faith registration and use pursuant to paragraph 4(b)(i) and (ii) of the Policy.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used 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.
Flip Jan Claude Petillion
Sole Panelist
Date: September 9, 2013
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