The Complainant is Zagliani S.r.L. of Milan, Italy, represented by Studio Barbero, Italy.
The Respondent is PrivacyP of Nobby Beach, Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2013. On November 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 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 amendment to the Complaint on November 18, 2013.
The Center verified that the Complaint together with the amendment to 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 amendment to the Complaint, and the proceedings commenced on November 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2013.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on December 31, 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
According to the documentary evidence and contentions submitted, the Complainant owns a number of trademark registrations for the trademark ZAGLIANI for shoes, ready to wear, jewelry and perfumes etc. which are listed below:
- International Trademark Registration No. 935252, registered on July 9, 2007 in classes 18, 25 and 35;
- International Trademark Registration No. 999348, registered on January 23, 2009 in classes 03, 09, 14, 18, 24, 25 and 35;
- Italian Trademark Registration No. 1055317 for ZAGLIANI filed on February 15, 2007 and granted on July 09, 2007 in classes 3, 9, 14, 16, 18, 20, 21, 24, 25 and 35;
- Italian Trademark Registration No. 1269241 for ZAGLIANI DAL 1947, filed on February 15, 2007 and registered on April 08, 2010 in classes 3, 9, 14, 16, 18, 20, 21, 24, 25 and 35;
- Indian Trademark Registration No. 1919318 for ZAGLIANI of February 8, 2010 in classes 18 and 25;
- Lebanon Trademark Registration No. 127809 for ZAGLIANI filed on April 09, 2010 in classes 18 and 25;
- Brazilian Trademark Registration No. 830598340 for ZAGLIANI filed on May 10, 2010 and granted on March 05, 2013 in class 18;
- Argentina Trademark Registration No. 2413652 for ZAGLIANI on December 10, 2010 in class 18;
- Argentina Trademark Registration No. 2413653 for ZAGLIANI on December 10, 2010 in class 25;
- Indonesia Trademark Registration No. IDM000322430 for ZAGLIANI filed on April 27, 2010 and granted on September 20, 2011 in class 18;
- Indonesia Trademark Registration No. IDM000345456 filed on December 1, 2010 and granted on January 16, 2012 in class 25;
- Hong Kong, China, Trademark Registration No. 301297107 for ZAGLIANI of March 4, 2009 in classes 3, 9, 14, 18, 24, 25 and 35;
- Chinese Trademark Registration No. 8235555 for ZAGLIANI (in Chinese characters) of August 7, 2011 in class 18;
In addition, the Complainant is the owner of a number of domain names containing the registered trademark of the Complainant.
“Zagliani” is also the trade name of the Complainant’s company.
The disputed domain name was registered on February 8, 2007. 5. Parties’ Contentions A. Complainant
The disputed domain name incorporates the trademark ZAGLIANI in its entirety, which is identical to the registered trademark ZAGLIANI, which has been registered by the Complainant as a trademark and domain names in numerous countries all over the world.
According to the Complainant, the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use Complainant’s trademark ZAGLIANI.
The Complainant argues that there is no evidence showing that the Respondent, who is moreover hiding behind a “shield”, might be commonly known by the disputed domain name as an individual, business or other organization.
The Complainant also stated that the Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute.
The Complainant further contends that the disputed domain name has been redirected to web pages displaying several sponsored links, which generate revenues, via the pay-per-click system, to the disputed domain name holder.
In addition, some of the links published on said pages make explicit reference to well-known trademarks of the Complainant’s competitors, including CHANEL, GUCCI, BALENCIAGA, VERSACE, PRADA, COACH and FENDI and, according to the verifications conducted by the Complainant’s representative, all the links redirect users to third party commercial web sites not affiliated to the Complainant.
Finally, the Complainant contends that the disputed domain name has been registered and is being used in bad faith by the Respondent because:
a) The Respondent could not have possibly ignored the existence of the Complainant’s trademark when it registered the disputed domain name ;
b) It is inconceivable that the Respondent was not aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name;
c) The disputed domain name has been redirected to web pages displaying several sponsored links to various third party commercial websites;
d) The Respondent’s use of the disputed domain name is diverting traffic from the Complainant’s website;
e) By redirecting the disputed domain name to web pages displaying sponsored links, the Respondent at least earns commission whenever an Internet user visits its web site and clicks on one of the links;
f) the Respondent offered for sale the disputed domain name (prima facie through a broker) demanding the considerable amount of USD 9,999 (is certainly to be considered well in excess of the out-of pocket costs) to the web agency;
g) The Respondent keeps on using a WhoIs privacy protection service for the registrations which, even if per se does not constitute a bad faith use, can in certain circumstances constitute a factor indicating bad faith, depending on the manner in which such service is used. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name incorporates the trademark ZAGLIANI in its entirety.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g.,Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l.,WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282.
Therefore, the Panel finds that the disputed domain name is identical to the trademark ZAGLIANI and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Respondent has failed to demonstrate such rights or legitimate interests. The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods or services by its use of the disputed domain name and has not rebutted the Complainant’s prima facie case. Nor has the Respondent shown that it has been commonly known by the disputed domain name.
The Panel further finds that given the use made of the disputed domain name, when the Respondent registered the disputed domain name it must have known the ZAGLIANI trademark of the Complainant. It registered the disputed domain name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Panel is of the opinion that the Respondent must have been aware of the Complainant and its trademark rights when it registered the disputed domain name. The Panel is prepared to infer that the Respondent is taking advantage of the goodwill and reputation of the Complainant’s trademark for commercial gain and it well established that such use is evidence of bad faith. Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Universal Spheres Inc.,WIPO Case No. D2010-0822. Further, such use clearly threatens to divert actual clients away from the Complainant and disrupt the Complainant’s business.
The Respondent is deriving a financial benefit from web traffic diverted through the disputed domain name to linked websites on the disputed domain name parking page. The Panel therefore also accepts that the Respondent has intentionally attracted Internet users to its websites or other on-line locations for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
As in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the disputed domain name, including the apparent offer to sell the disputed domain name to the Complainant, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds in favor of the Complainant on the third element of the Policy. 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.
Dilek Ustun Ekdial
Sole Panelist
Date: January 14, 2014
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