Complainant is Liu.Jo S.p.A. of Carpi, Italy, represented by Studio Legale SIB, Italy.
Respondent is Anita Kreft of New York, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2015. On March 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 28, 2015.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on April 30, 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. 4. Factual Background
Complainant is an Italian corporation, which has its main business activities in the city of Carpi (Modena). The company is dedicated mostly to manufacturing, marketing and selling high-end articles of clothing and accessories and was founded in 1995.
Nowadays, Complainant is a luxury goods brand and uses the LIU.JO trademark to identify its products on the market. Complainant’s products can be found at flagship stores and retail stores, as shown in Complainant’s website at “”. The domain name was registered on June 28, 2009.
Complainant owns more than 150 applications or registrations worldwide for trademarks containing the term “” and similar brands, among others, the Community Trademark Registration No. 000234351 for LIU.JO registered in 1999 and Community Trademark Registration No. 000747923 registered in 1999 as per Annexes 4 and 5 of the Complaint.
Complainant also owns several domain names bearing the term “”, among which are and , as per Annex 6 of the Complaint.
The disputed domain names , , and , were all registered by Respondent on July 8, 2014. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain names , , and are confusingly similar to Complainant’s LIU.JO trademark. In this sense, Complainant observes that the only difference between the disputed domain names with Complainant’s trademark is the inclusion of the suffix “.com”, as per previous WIPO UDRP cases, such as SENSIS Pty Ltd, Research Resources Pty Ltd v Kevin Goodall,WIPO Case No. D2006-0793 and of the descriptive components “home” and “online”.
Moreover, Complainant alleges that the terms “” and “liujo-home”, “liujohome”, “liujo-online” and “liujoonline” are phonetically, graphically and conceptually similar since Complainant’s trademark is entirely reproduced as the initial part in Respondent’s disputed domain names. Also according to Complainant, consumers tend to concentrate their attention on the initial part of a sign.
In addition, Complainant points that the terms “home” and “online” are very common and that their combination with the term “” is negligible, since the semantic content of both terms is descriptive. Notwithstanding this, Complainant also affirms that it manufactures and markets a line of home garments (Annex 7) and has an important channel of sale in its online store. Consequently, the addition of the suffixes – “home” and “online” – in the disputed domain names and the presence of the “.com” suffix are not sufficient to distinguish Respondent’s disputed domain names from Complainant’s LIU.JO trademark, in accordance to Complainant.
Complainant further claims that Respondent has no rights or legitimate interests in respect to the disputed domain names, since Respondent is not affiliated in any way with Complainant and does not own any trademark registrations or applications for “liujo-home”, “liujohome”, “liujo-online” and “liujoonline” or any similar marks.
Additionally, Complainant states that it has not licensed or otherwise authorized Respondent to use the LIU.JO trademark, or to apply for domain names containing such mark. In this sense, Complainant invokes Parfums Christian Dior v. 1 NetPower, Inc.,WIPO Case No. D2000-0022.
Complainant concludes, therefore, that Respondent chose the disputed domain names, and the descriptive terms “home” and “online”, intentionally violating Complainant’s rights.
Complainant also claims that Respondent has registered and is using the disputed domain names in bad faith since Respondent has registered it with the purpose of taking unfair advantage of the reputation of Complainant’s LIU.JO trademark. According to Complainant, the registration of the disputed domain names herein confuses customers as to Respondent’s affiliation with Complainant, since most luxury brands also have a “home” collection.
Complainant alleges that Respondent’s disputed domain names discouraged Internet users from locating Complainant’s actual website, what dilutes the value of the trademark LIU.JO, owned by Complainant.
Lastly, Complainant asserts that the printouts reproduced in Annex 8 of the Complaint prove that the disputed domain names , , and are in a state of passive holding. Considering this, Complainant refers to other WIPO UDRP cases, according to which passive holding is also considered a bad faith use, as decided in Farouk Systems, Inc. v. QYM QYM, WIPO Case No. D2009-1572. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The burden of proving these elements is on Complainant. A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of several trademark registrations for LIU.JO worldwide.
In addition, the Panel also considers that the disputed domain names , , and are confusingly similar to Complainant’s trademark, since they are composed by the exact same term “”, with the mere addition of the words “home” and “online” respectively.
The Panel understands that the disputed domain names containing Complainant’s trademark in its entirety is sufficient to cause confusion and create false associations between Complainant and Respondent, misguiding consumers into believing that Respondent’s activities have the same origin as to the products and services provided under the LIU.JO trademark.
Therefore, the Panel finds that the disputed domain names , , and are identical and confusingly similar to Complainant’s LIU.JO trademark. B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case Complainant has provided sufficient prima facie evidence of “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, the Panel has considered Complainant’s prima facie evidence to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain names , , and .
The Panel acknowledges that Complainant has never entered in any agreement, authorization or license with Respondent, regarding the use of the trademark LIU.JO or that it is affiliated with Complainant’s activities whatsoever.
Furthermore, it is clear that there is no trademark registered, in the name of Respondent, that consists of, or contains, the terms “”, and that it has any rights or legitimate interests in the name “”. On that account, the Panel is also of the same opinion that Respondent is not commonly known by the disputed domain names and does not trade under the names “liujo-home”, “liujohome”, “liujo-online” or “liujoonline”.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain names (Policy, paragraph 4(a)(ii)). C. Registered and Used in Bad Faith
The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant’s company name and trademark LIU.JO at the time of registration of the disputed domain names, considering its notorious status and success in the fashion field. In this sense, the Panel concludes that Respondent registered it with the intention to take unjust advantage of Complainant’s LIU.JO trademark.
The Panel also notes that the disputed domain names are not being currently used with an online website, which constitutes “passive holding”, which may, in certain circumstances, constitute evidence of bad faith use. In this sense, the Panel refers to paragraph 3.2 of WIPO Overview 2.0:
“With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere ‘parking’ by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).”
In addition, the Panel also recognizes that Respondent’s disputed domain names contribute to discourage Internet users into finding Complainant’s true website.
Accordingly, the Panel concludes that the disputed domain names were registered and are being used in bad faith. 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 names , , and be transferred to Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: May 12, 2015
Full & Egal Universal Law Academy