The Complainant is M.F.H. Fejlesztõ Korlátolt Felelõsségû of Budapest, Hungary, represented by Novagraaf Nederland B.V., the Netherlands.
The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Quantec, LLC/Novo Point, LLC of Dallas, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2013. On November 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 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 14, 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 proceedings commenced on November 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2013. The Respondent did not submit any response. Accordingly, the Center informed the parties of the commencement of the panel appointment process on December 12, 2013.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on December 18, 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.
The Panel has received and reviewed copies of documents relating to the appointment of a Receiver to the Respondent pursuant to an Order of the US District Court for the Northern District of Texas, Dallas Division. The Panel reflects on its discretion under paragraph 18 of the Rules to consider the effects of legal proceedings in respect of a domain-name dispute that is the subject of the complaint. The Panel considers that the present receivership matter does not prevent it to render a decision based, in the absence of a Response, upon the merits of the Complaint. 4. Factual Background
According to the Complainant, it is the market leader for the sale of underwear in Europe. It is the owner of various trademark registrations for the mark INTIMISSIMI for, inter alia, underwear and nightwear in several countries worldwide. The brand name Intimissimi was created in 1986.
The Complainant has adduced evidence of numerous trademark registrations for the mark INTIMISSIMI throughout the world including European Community, Canadian, New Zealand, Russian Federation, Vietnamese, Japanese, Chinese and Swiss trademarks and an international trade mark registration. These are set out at Annex 6 to the Complaint which also incorporates reproductions of the trademark registrations in the above jurisdictions.
The trademark INTIMISSIMI has been used intensively in commerce and continues to be used worldwide. The Complainant communicates on the Internet through various websites. Its main domain name is registered on July 27, 1998 by the Complainant. Its domain names are listed at Annex 7 to the Complaint. The Complainant has a history of successfully bringing complaints under the UDRP in respect of domain names identical or confusingly similar to the mark INTIMISSIMI.
The Complainant has spent considerable time, effort and money since 1986 in advertising and promoting its clothing in connection with the trademark INTIMISSIMI. The Intimissimi brand is used by the Italian company, Calzedonia Spa Group. By setting up a franchise network, the Intimissimi network consists of more than 1020 shops in 23 different countries around the world. At Annex 8 to the Complaint is a reproduction of the website of Intimissimi. The Complainant submits that Intimissimi trading under the mark INTIMISSIMI is well known in many countries worldwide and embodies a substantial goodwill.
The disputed domain name was registered on December 27, 2005.
On August 2, 2013 the Complainant’s representatives, Novagraaf wrote to the Respondent drawing its attention to its registration of the disputed domain name pointing out that the domain name was nearly identical to the Complainant’s trademark INTIMISSIMI. The letter asked for voluntary agreement to transfer the disputed domain name to the Complainant. The letter warned that if the Respondent failed to do so a complaint would be brought under the terms of the Policy. It appears that no response was received to that letter.
The Respondent has not filed a Response. In those circumstances, the Panel accepts the evidence adduced by the Complainant and set out above as true. 5. Parties’ Contentions A. Complainant
The Complainant submits:
(i) The disputed domain name is confusingly similar to the Complainant’s mark INTIMISSIMI.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant relies upon the fact that the Respondent’s use of the mark INTIMISSIMMI as part of the disputed domain name is misleading.
(iii) The disputed domain name was registered and is being used in bad faith. In particular the Complainant submits:
1. The disputed domain name is only being used for a parking site;
2. The disputed domain name leads Internet users to the parking site with sponsored links of competitors by creating a likelihood of confusion with the Complainant’s mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant points out that the only difference between the trademark INTIMISSIMI and the disputed domain name spelt “intimissimmi” is just one letter and is therefore negligible. It submits that there is consistent authority that “a mere addition or minor misspelling of the Complainant’s trademark does not create a new or different mark in which the Respondent has legitimate rights”.
The Panel comes to the same conclusion. In the Panel’s view, the fact that the only difference between the mark INTIMISSIMI and “intimissimmi” is an additional letter “m” inevitably leads to the conclusion that the disputed domain name is confusingly similar both visually and phonetically to the mark.
The Complainant therefore succeeds in respect of this element. B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It refers to Annex 9 to the Complaint which is a print of the web page that recently appeared under the domain name . That appears to be an online site for so called “intimate apparel” including silk nightgowns, discount bras, women’s thongs, see-thru panties, push-up bras, boxer shorts and bridal corsets. There are links in respect of bridal lingerie, padded bras, under-wired bras, silicone cups and plus size lingerie. The Complainant draws attention to the fact that these links relate to the clothing items that the Complainant uses (and sells) and in which the trademark INTIMISSIMI has been registered for. Therefore the Respondent’s use of the disputed domain name for the purposes of showing links to other online clothing shops cannot be bona fide commercial use because it is misleading to consumers who think that the site is linked to the Complainant.
The Complainant refers to an earlier decision (Emirates Group Headquarters v. Domain Discreet / Ahmed Bin Subaih,WIPO Case No. D2010-0811) in which the panel decided in the context of the circumstances of the case that the use of a domain name to route users to a website displaying links to third party sites rather than offering products or services directly on the website itself cannot be legitimate. The Panel accepts this argument.
In the absence of a Response, the Panel finds that there is no evidence establishing a right or legitimate interest in respect of the disputed domain name. To the contrary Annex 9, as is submitted by the Complainant, is itself evidence of an absence of rights or legitimate interests.
It follows that the Complainant succeeds in this element. C. Registered and Used in Bad Faith
The Complainant submits that the domain name is not being used other than for a parking site with the purpose of sponsored links. This taken together with the fact that the disputed domain name is confusingly similar to the mark is evidence that the mark was deliberately chosen because of the fact that it is a well-known mark and therefore particularly suitable to attract customers of fashion shops for the sponsored links.
In the Complainant’s view, it follows that the Respondent intentionally causes initial interest confusion and intentionally attempts to attract, for commercial gain, Internet users to the parking site with sponsored links of competitors by creating a likelihood of confusion with the goodwill and reputation which the Complainant owns in the mark INTIMISSIMI. The Complainant relies upon a number of earlier UDRP decisions including Shaw Industries Group, Inc. and Columbia Insurance Company v. Click Consulting Ltd.,WIPO Case No. D2006-1422 and HYDAC Technology GmbH v. Click Consulting Ltd.,WIPO Case No. D2006-1364 which establish that a respondent’s objectives underlying the registration and use of the domain name and in which others have registered rights constitutes bad faith. The Panel accepts this submission.
The Panel also bears in mind the fact that the Complainant through its representatives wrote to the Respondent requesting that the Respondent cease using the disputed domain name and that the Respondent chose not to reply.
In these circumstances, the Panel reaches a finding that the disputed domain name was registered and is being used in bad faith by the Respondent. 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.
Clive Duncan Thorne
Sole Panelist
Date: January 17, 2014
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