The Complainant is Dolce & Gabbana S.r.l. of Milano, Italy, represented by Studio Turini, Italy.
The Respondent is Rose Wang of Fuzhou, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2013. On October 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 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 October 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2013.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on November 22, 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 Dolce & Gabbana s.r.l., an Italian company established since the 1980s in the fashion business. Since the beginning of its operations the Complainant does business under the trademark and name DOLCE & GABBANA, which is the combination of the last names of the two founders of the company, fashion stylists Domenico DOLCE and Stefano GABBANA. This trademark has had its renown and fame reach the whole world over.
The trademark DOLCE & GABBANA is the object of several registrations throughout the world, as stated in Annexes 3.1 to 12 of the Complaint. The Complainant is the exclusive licensee of these marks. DOLCE & GABBANA is also the Complainant’s trade name.
The evidence presented shows that the trademark DOLCE & GABBANA is original and distinctive. Besides, it has gathered awareness throughout the world and can be considered a well-known trademark, according to the provisions of article 6 bis of the Paris Convention.
In sum, the Complainant shows evidence of substantial goodwill and name recognition in the expression “Dolce & Gabbana”, based on intensive use on a long term basis. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name contains the worldwide known trademark DOLCE & GABBANA.
The Complainant has obtained registrations for the trademark DOLCE & GABBANA throughout the world, as well as a domain name formed by this trademark, namely , which is the Complainant’s main website.
The Complainant also states that by adding words of common use to the fashion business – “sale” and “shop” – the Respondent was clearly trying to lead to confusion associated with its trademark DOLCE & GABBANA.
The Complainant claims never having licensed or authorized the Respondent to use its trademark or to apply it for any kind of domain name.
The Complainant also states that the Respondent is not making a legitimate use of the disputed domain name. On the contrary, the disputed domain name is being used to sell counterfeit products of the Complainant, offered for sale through the Respondent’s web site, as stated in Annexes 13 and 14 of the Complaint. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
i. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect to the domain name; and
iii. the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Regarding the first element, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the trademark DOLCE & GABBANA, which is registered in several countries and clearly used regularly throughout the world.
Further, the Panel finds that the disputed domain name is confusingly similar to the trademark belonging to the Complainant, since this trademark is entirely reproduced in it.
Moreover, the disputed domain name incorporates entirely the mark DOLCE & GABBANA, merely adding the words “sale” and “shop”, which are clearly linked to the retail fashion business. As further discussed below, this fact can be considered as an attempt to lead the consumers to confusion.
Hence, the Panel concludes that the first element of the Policy has been satisfied by the Complainant in this dispute. B. Rights or Legitimate Interests
Given, inter alia, the clear evidence that the DOLCE & GABBANA trademark is widely known, the fact that the goods are sold under this trademark throughout the world as well as the undeniable link between that trademark and the Complainant, the Panel finds that the Complainant has established a prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not rebutted the Complainant’s contentions.
Hence, the Respondent cannot claim to have been using the trademark not knowing the Complainant’s rights to it. Besides, as shows in the Annexes 13 and 14 of the Complaint, the disputed domain name leads to a web site that bore apparel apparently sold by the Respondent which the Complainant claimes are counterfeit. This shows that the Respondent’s interests cannot have been legitimate.
The Panel, thus, finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith
It is the Panel’s opinion that the Respondent has registered the disputed domain name with the purpose of taking advantage of the renown of the Complainant’s trademark. The fact that the words “sale” and “shop” are commonly used in the fashion business to identify a discount sale of renowned trademarks supports this supposition.
Further, the Respondent is using the disputed domain name to identify a web site where various products, which the Complainant claims are counterfeit, are offered for sale, in a clear act of bad faith. The Respondent appears to be doing so for the purpose of commercial gain, arising from the probable confusion of the disputed domain name with the Complainant and its trademark. The Respondent has not filed a response.
The Panel finds that, for the reasons mentioned above, the Respondent registered and has been using the disputed domain name in bad faith.
The Panel, hence, finds that the third element of the Policy has been established. 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.
Alvaro Loureiro Oliveira
Sole Panelist
Date: December 13, 2013
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