The Complainants are Oscar Studio di Cavallin Oscar and 5282 S.R.L both of Veneto, Italy, represented by Cervato Law & Business, Studio Legale di Impressa, Italy.
The Respondent is Rob Monster of Bellevue, Washington, United States of America (“USA”), represented internally. 2. The Domain Name and Registrar
The Domain Name (the “Registrar”) is registered with Epik, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2014. On December 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 24, 2014, 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 January 14, 2015. The due date for the Response was February 3, 2015. The Respondent did not submit a formal response and the Center notified the Respondent of his default by a Notice of Respondent Default issued on February 6, 2015.
On February 6, 2015, the Respondent wrote to the Center requesting an extension of time to file a Response, stating that while he had received the Center’s letter of January 14, 2015, he had not received the Complaint. This statement is surprising given that the Respondent (in his capacity as Founder and CEO of the Registrar) informed the Center by email on December 24, 2014 that he had received the Complaint and expressed the view that it was without merit. If, contrary to what he said in that email to the Center, he had not received a copy of the Complaint by December 24, 2014, it is surprising that he did not immediately inform the Center on receipt of the Center’s letter of January 14, 2015 that the copy of the Complaint said to have been attached to that letter was not in fact attached to it. Instead he left it until he had received the Notification of Respondent Default before informing the Center.
On February 9, 2015 the Complainants objected to the grant of an extension of time, pointing out that on December 23, 2014 the Respondent emailed the Complainants confirming receipt of the Complaint and stating that he would be responding viathe Center. The Respondent’s response was that he did not regard the Complainants’ email of December 23, 2014 as an “official notification”. The Response due date was extended by the Center to February 9, 2015 and on that day the Respondent indicated to the Center that it would be lodging the Response before the end of the day. The Response (albeit dated February 9, 2015) was filed with the Center on February 11, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 16, 2015. 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 reviewed the correspondence relating to the request for an extension of time (as summarized above). The Panel takes the view that the Respondent was extraordinarily fortunate to have been granted an extension of time at all. In failing to meet the extended time limit despite an assurance that it would be met, the Respondent is, in the view of the Panel, not entitled to any further preferment. The Panel declines to accept the late Response into this administrative proceeding. 4. Factual Background
The first of the above-named Complainants is the registered proprietor of Italian and International trade mark registrations for a figurative device comprising the words “Leather Crown” in script surmounted by a device of a crown. The first of those trade mark registrations, Italian registration no. 0001377337, was registered on November 29, 2010 (filed July 28, 2009) in class 25 for clothing, footwear and headgear.
The second registration, the International Trade Mark registration, post-dated registration of the Domain Name and is of no significance in this dispute.
The second of the above-named Complainants is the first Complainant’s licensee and resides at the same address. It promotes sale of “Leather Crown” products through a website connected to its domain name, . From the case file it appears to the Panel that the Complainants are associated companies and for the purposes of this decision the Panel treats them as one.
The Respondent, who is Founder and CEO of the Registrar, registered the Domain Name on July 18, 2012. It is connected to a website featuring links to fashion sites including links such as “Leather Crown” “Scarpe Leather Crown”, “Outlet Scarpe Uomo”, “Scarpe Donna” and “Geox Scarpe Stivaletti” offering inter alia the Complainants’ goods and goods competing with the Complainants’ goods. The website features a legend at the top of the page reading: “This domain may be for sale” and at the bottom of the page a notice reading: “The Sponsored Listings above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trade mark issues please contact the domain owner directly (contact information can be found in whois).”
The Respondent’s bio appearing on the Registrar’s website, which is annexed to the Complaint, identifies the Respondent as being a seasoned specialist in the area of “consumer internet”. 5. Parties’ Contentions A. Complainants
The Complainants contend that the Domain Name is confusingly similar to the Complainants’ LEATHER CROWN trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent has not responded to the Complainants’ contentions.1 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Complainants’ trademark comprises the words “Leather Crown” (albeit as a single word without the space) surmounted by a device of a crown as described in section 4 above. To the eyes of the Panel it is the device of the crown, which first catches the eye. The wording in script form is not particularly clear. Nonetheless the Italian Trade Mark Register identifies the trade mark by reference to the name “leather crown” and, clearly, if referring to the mark, one would normally describe it as a “Leather Crown device mark”.
The Domain Name comprises the textual element of the Complainants’ trade mark (albeit not in script form) and the “.com” generic Top-Level Domain (“gTLD”) identifier. It is now well-established that panels may, for the purpose of paragraph 4(a)(i) of the Policy, ignore the gTLD identifier where it does not serve a distinctive function. Here the gTLD identifier serves no distinctive function and the Panel excludes it from the assessment, thereby leaving the textual element of the Complainants’ figurative trade mark.
Conscious that the first element is intended to be a low threshold test designed primarily to ensure that the Complainants have a bona fide basis for filing the Complaint, the Panel concludes that the textual element of the Complainants’ trade mark is sufficiently prominent for it to form the basis of this comparative test.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainants have rights. C. Rights or Legitimate Interests
First, the Panel should make it clear that in principle there is no reason why a proprietor of a domain name connected to a commercial pay-per-click website should not be able to establish rights or legitimate interests in respect of that domain name. This might be so, in particular, where the domain name comprises an ordinary dictionary word (or words) and the revenue earning links are consistent with the meaning of the dictionary word (or words).
In this case, on the basis of the evidence put before the Panel by the Complainants, it appears that the Domain Name has been connected and is still connected to a pay-per-click website offering links to sites concerned primarily with the Complainants’ field of activity (e.g. footwear). Many of the links are worded in the Italian language. Whoever is responsible for selecting the links (and the Panel accepts that it may well not be either the Respondent or the Registrar) is clearly aware that the Domain Name is an Italian brand of shoe. If there are links relating to leather crowns, the Panel has not been able to find them.
In the view of the Panel such a use cannot give rise to rights or legitimate interests in respect of the Domain Name. The fact that it may be a third party who is directing the links does nothing to assist the Respondent. The Respondent has to accept responsibility for what is on the site and particularly where it is providing him with a source of income.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
Registering a domain name featuring a trade mark of another for the purpose of selling it at a profit to the trade mark owner is one of the prime examples of registration and use in bad faith set out in paragraph 4(b) of the Policy. Another example is the registration of such a domain name for commercial gain, relying upon Internet users being deceived into believing that the registrant’s website is a website of (or authorized by) the trade mark owner.
In this case, the Complainants make claims under both those heads.
As to the first, the Complainants point to the legend at the top of the Respondent’s website reading: “This domain may be for sale”. In the Panel’s experience this is most unlikely to constitute an express offer for sale. It is a generic legend to be found on the websites of most registrars and not specific to any category of domain name. At all events, the Panel is not persuaded that this was the primary purpose for which the Domain Name was registered.
As to the second claim, namely that the Respondent registered the Domain Name to take commercial advantage of the Complainants’ trade mark, the Complainants have a stronger basis for making the claim. The Respondent’s website is clearly targeted to a significant degree to the Complainants’ field of activity (not leather crowns) and the Complainants’ geographical location (Italy). Some of the links feature the Complainants’ products, but many also feature the products of the Complainant’s competitors.
While it is possible that the Respondent acquired the Domain Name blissfully unaware of the existence of the Complainants and the use to which the Domain Name has been put, the Panel finds it more likely that the Respondent intentionally set out to target the Complainants’ brand and to derive commercial gain on the back of the fame of the Complainants’ brand. The Respondent is a self-proclaimed expert in the “consumer internet” area and the Panel believes it more likely than not that the Respondent will have investigated the potential of the Domain Name before acquiring it and will have monitored the use to which it has been put. Had the advertising links been to sites concerned with leather crowns and not so specifically targeted to Italian footwear, the Panel might well have come to a different conclusion.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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 Domain Name, , be transferred to the first-named Complainant, Oscar Studio di Cavallin Oscar.
Tony Willoughby
Sole Panelist
Date: February 19, 2015
1 The Respondent did in fact file a Response, but out-of time despite the grant of an extension of time. The Panel has rejected it for the reasons given in section 3 above.
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