The Complainant is Etro S.p.A. of Milan, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Hernan Villalobos of Houston, Texas, United States of America (“U.S.”), represented by Law Offices of Robert Levine, P.C., U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 201. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on February 20, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 4, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 24, 2014. The Response was filed with the Center on March 24, 2014.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on April 1, 2014. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant operates a fashion house based in Milan, Italy, which markets and sells textiles, fabrics and fashions under the trademark ETRO. The Complainant owns many trademark registrations around the world for the trademark ETRO, including the following U.S. registrations:
U.S. Trademark Registration No. 2971796 Class 14 Jewelry
U.S. Trademark Registration No. 2426909 Class 21 housewares
U.S. Trademark Registration No. 2328123 Class 9 sunglasses and accessories
U.S. Trademark Registration No. 1392859 Class 3 cosmetics and accessories
U.S. Trademark Registration No. 1134684 Class 24 woolen, silk and cotton fabric for clothing
U.S. Trademark Registration No. 1408590 Class 25 clothing
U.S. Trademark Registration No. 2205007 Class 24 textiles for furnishings and interior decorations
U.S. Trademark Registration No. 2212177 Class 42 retail store services for jewelry, housewares, sunglasses, cosmetics, textiles and fabrics for clothing and furnishing, and clothing
U.S. Trademark Registration No. 388762 Class 35 advertising, business management services
U.S. Trademark Registration No. 3936782 Class 18 leather goods, including luggage and hand bags
U.S. Trademark Registration No. 4051470 Class 43 restaurant and bars services selling food and beverages
The Complainant owns many domain names that contain the Complainant’s ETRO trademark, namely , , , , , , and .
The Complainant owns and operates boutiques under the ETRO name in various major cities around the world including Milan, Verona, Venice, Florence, Rome, Paris, London, Berlin, Madrid, Munich, Moscow, Tokyo, New York and Miami. The Complainant’s New York ETRO boutique opened its doors in 1996 on Madison Avenue. The second ETRO boutique was opened in the Soho district in New York in 2011.
The Respondent operates a night club/lounge in Houston, Texas under the name Etro Lounge. The business has been operated under the Etro Lounge name since January 2007. The Respondent had first been involved as the manager for the business and ultimately acquired the business from its first owner in 2009. The Respondent registered the disputed domain name on December 30, 2010. The disputed domain name reverts to a website that promotes and advertises the Respondent’s nightclub under the Etro Lounge name. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant submits that it owns many trademark registrations for the trademark ETRO around the world, including above noted U.S. Registrations. The earliest of these registrations date back to July, 1978.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademark ETRO. The Complainant contends that the descriptive word lounge does not distinguish the disputed domain name from the Complainant’s famous ETRO trademark, particularly in light of the fact that the Complainant owns a trademark registration for restaurant and bar services. Rights and Legitimate interests
The Complainant contends that the Respondent was never authorized or licensed to use the Complainant’s ETRO trademark. The Respondent has never registered or applied to register a trademark for the word ETRO, and is not commonly known by that name. The Complainant contends that the word ETRO is not descriptive of goods, services or businesses in the U.S., and therefore the Respondent could not have any legitimate interest or right in the disputed domain name. The Complainant submits that the use of a confusingly similar trademark in association with a business does not demonstrate a bona fide offering of goods and services. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent must have been aware of the Complainant’s famous ETRO trademark. The Respondent registered and is using the disputed domain name to interfere with the Complainant’s business and is attempting to trade on the goodwill of the Complainant’s reputation. B. Respondent
The Respondent submits that he has a legitimate interest and right to the disputed domain name as a result of his involvement in operating the night club/lounge under the name Etro Lounge. The Respondent relies on the following facts:
1) the lounge business has been operating in Houston, Texas under the Etro Lounge name since 2007;
2) the business was originally owned by Zelus Enterprises, Inc. and managed by the Respondent;
3) the Respondent’s company Geronino A. Villalobos Enterprises, Inc. purchased the Etro Lounge business in September, 2009 from Zelus Enterprises, Inc.;
4) from 2007 to the present date, the Etro Lounge business has operated as a night club featuring “retro” music from the 1980’s. The name Etro Lounge is an amalgamation of the terms “retro” and “eighties”;
5) throughout its 6+ years of operations, the Etro Lounge has never attempted to draw a connection to the Complainant’s brand;
6) the Respondent registered the disputed domain name in December, 2010 as an extension of his already operating business under the name Etro Lounge. The disputed domain name reverts to a website that promotes and advertises that business.
The Respondent notes that the Complainant’s U.S. Registration 4051470 in association with restaurant and bar services was only filed on May 27, 2010, more than 3 years after the Respondent’s Etro Lounge began operating. In spite of the existence of this registration, the Respondent notes that the Complainant does not actually operate a lounge or restaurant providing food and/or beverages, according to the Complainant’s own website materials.
The Respondent submits that he did not register the disputed domain name in bad faith as he had no intention to draw any connection to the Complainant’s business, and sought only to promote his previously established night club. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in the mark ETRO trademark by virtue of its many trademark Registrations around the world, including those listed in section 4 above.
The Panel further finds that on the balance of probabilities, the disputed domain name is confusingly similar to the Complainant’s registered trademark ETRO for purposes of the analysis under the first Policy element (while the existence of the Complainant’s trademark registration for ETRO, for restaurant and bar services coupled with the word “lounge” may increase the overall likelihood of confusion, there is some doubt about the strength of that registration, which would require a fuller analysis than is possible under the Policy. Moreover, such analysis would be more germane to a discussion of bad faith).
The Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Complainant has failed to prove the absence of rights or legitimate interests in the disputed domain name by the Respondent. The evidentiary record before the Panel shows that the Respondent registered the disputed domain name on December 30, 2010, after acquiring the Etro Lounge business from its predecessor Zelus Enterprises, Inc. The Respondent worked for the previous owner, and understood that Zelus Enterprises chose the name because the lounge/dance club played retro 1980’s music, and “etro” was an amalgamation of the words “eighties” and “retro”. The Respondent denies that he had ever heard of the Complainant’s ETRO products. Although it owns prior registrations for the ETRO trademark for clothing, accessories and retail stores, the Complainant has not put forth specific evidence that the Respondent was targeting the Complainant’s mark when selecting a business name.1 The Respondent’s evidence shows that the Respondent has consistently used and is still using the disputed domain name only in association with a website that promotes and advertises his night club/lounge. Nothing in the evidence indicates that the Respondent ever utilized any symbols, artwork or other indicia connected to the Complainant’s brand, in its advertising, décor, signage or trade dress. This evidence supports the finding that the Respondent is using the disputed domain name in association with a bona fide offering of goods and/or services. The Panel therefore concludes that, on the basis of the evidentiary record in this proceeding, the Complainant has failed to prove the absence of rights or legitimate interests on the part of the Respondent.
For the purposes of this proceeding, which is summary in nature, the evidence is sufficient to warrant this finding against the Complainant. However, the Panel wishes to make it clear that other remedies may be available to the Complainant in a different forum, and that nothing in this decision should be understood as providing a definitive finding on the respective trademark rights of the parties, beyond the narrow question determined under this proceeding. C. Registered and Used in Bad Faith
Although the Panel need not make a finding with respect to bad faith in view of the findings made with respect to Rights and Legitimate Interests above, it is noted that the Respondent’s business name appears to have been chosen not with reference to the Complainant, but rather as a coined term, i.e., the present record does not appear to evidence bad faith targeting of the Complainant by the Respondent as would normally be required under the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Date: April 14, 2014
1 The Panel notes that, while not dispositive to the instant determination, the Complainant’s U.S. Trademark No. 4051470 for restaurant services was not filed until May 27, 2010 and was not published for opposition until August 23, 2011; the registration did not occur until November 8, 2011. The Etro Lounge business opened in January 2007, was acquired by the Respondent on September 1, 2009, and the domain name was registered on December 30, 2010, all of which occurred before the publication and registration of the Complainant’s trademark. The Panel notes that there is no evidence the Complainant has actually used its ETRO mark for restaurant and bar services. The Respondent has in fact raised doubts about whether this form of use has ever occurred, in light of the Complainant’s own websites, where no references to these services can be found.
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