The Complainant is Twin Set - Simona Barbieri S.P.A. of Carpi, Italy, represented by Jaumann sas di Paolo Jaumann & C, Italy.
The Respondent is Eduardas Baltmiskis of Naperville, Illinois, United States of America (“United States”). 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 April 4, 2017. On April 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2017.
The Center appointed Alfred Meijboom as the sole panelist in this matter on May 17, 2017. 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
The Complainant owns European Union trade mark no. 13980628 TWIN-SET which was registered on November 2, 2015 and International trademark registration no. 1284077 TWIN-SET registered on December 9, 2015, both for, inter alia, bags, wallets, clothing items, headgear, and gloves (the “Trademark”). The International trademark registration no. 1284077 was designated for Albania, Armenia, Australia, Azerbaijan, Bosnia and Herzegovina, Bahrain, Belarus, Switzerland, China, Colombia, Cuba, Algeria, Egypt, Georgia, Israel, India, Islamic Republic of Iran, Iceland, Japan, Kyrgyzstan, Republic of Korea, Kazakhstan, Morocco, Republic of Moldova, Montenegro, The former Yugoslav Republic of Macedonia, Mexico, Norway, New Zealand, Oman, Philippines, Singapore, Tajikistan, Turkmenistan, Turkey, Ukraine, United States, Uzbekistan and Viet Nam.
The disputed domain name was registered by the Respondent on February 18, 2017 and is being used to sell clothing and accessories using the Trademark. 5. Parties’ Contentions A. Complainant
According to the Complainant the disputed domain name is substantially identical as well as confusingly similar to the Trademark because it consists of the Trademark, together with the generic term “clothing”, which is highly descriptive of the type of goods that are covered by the Trademark. In this respect the Complainant alleges that it is well established that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not distinguish a domain name, and likewise that the addition of generic terms – particularly ones closely associated with the Complainant and its goods, services, or channels of trade – not only fails to avoid confusion but indeed generally tends to increase the likelihood of confusion.
Further, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name because he has not used the disputed domain name in connection with a bona fide offering of goods and services, is not known under the disputed domain name or any name that is similar to the disputed domain name, tarnishes the Trademark and the Respondent’s use of the disputed domain name does not constitute a legitimate noncommercial or fair use.
The Complainant asserts that the Trademark is extremely well known, particularly in the area of fashion and clothing. Given the distinctiveness of the Trademark and its reputation, the Complainant claims that the Respondent has registered the disputed domain name with full knowledge of the Trademark. The Complainant points out that this is even more evident considering that the Trademark is depicted in the website of the Respondent in a way that is very similar to the layout chosen by the Complainant for its Trademarks. Moreover, the Respondent is using the disputed domain name for selling clothing and accessories over the internet, which is the same as the business of the Complainant. The average consumer may indeed think that the goods offered by the Respondent are actually goods produced and manufactured by the Complainant. The Complainant has not purchased any item from the Respondent’s website and cannot tell if the goods offered by the Respondent are original or fake, but the Complainant found that the Respondent registered two other domain names that he uses for offering for sale goods of famous brands. According to the Complainant this is a clear hint that the Respondent picked up famous trademarks adding to them descriptive elements (such as “clothing”, “bags” and “wallet”) with the purpose of attracting, for commercial gain, internet users to his websites. Consequently, the Complainant considers it is clear that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent did not file a response. However, as set out in paragraph 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), the Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well established that the gTLD “.com”, may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy.
The Panel finds that the disputed domain name is confusingly similar to the Trademark. The Respondent has taken the Trademark in its entirety, leaving out the hyphen between “twin” and “set” which does not take away the confusing similarity between the disputed domain name and the Trademark, and merely added the descriptive word “clothing”. The added word is insufficient to differentiate the disputed domain name and the Trademark, and may even encourage – and therefore confuse – Internet users to believe that the website under the disputed domain name provides information of the Complainant.
Consequently, the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel takes note of the various allegations of the Complaint and in particular that no authorization has been given by the Complainant to the Respondent to use the Trademark or register the disputed domain name, the Respondent has not been commonly known by the disputed domain name, the Respondent has no prior rights or legitimate interests in the disputed domain name, and the disputed domain name resolves to a website which shows the Trademark, and offers apparel and bags under the Trademark for sale. As the Respondent uses the disputed domain name to misleadingly create an association with the Complainant for his own commercial gain there is no bona fide offering of goods and services by the Respondent.
The allegations of the Complainant remain unchallenged. There is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
In the Panel’s view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the Trademark in mind as it had already been registered and used for many years worldwide, whereas the website to which the disputed domain name resolves uses the Trademark in connection to offering clothing and accessories for sale. Furthermore, the use of the Trademark and the lack of clear disclaimers would likely confuse Internet users into believing a relationship existed between the Complainant and the Respondent. Under the circumstances, the Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith and that the use which the Respondent made of the disputed domain name to attract Internet users for the Respondent’s commercial gain constitutes use of the disputed domain name in bad faith.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met. 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.
Alfred Meijboom
Sole Panelist
Date: May 29, 2017
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