The Complainant is Brioni S.p.A. of Rome, Italy, represented by Studio Barbero S.p.A., Italy.
The Respondent is Steve Timani, Tutti Creative Design of Houston, Texas, United States of America (“United States” or “US”), self-represented. 2. The Domain Names and Registrars
The disputed domain names and are registered with Wild West Domains, LLC; the disputed domain name is registered with eNom, Inc. (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2018. On January 25, 2018, the Center transmitted by email to the Registrars, a request for registrar verification in connection with the disputed domain names. On January 25, 2018, the Registrars transmitted by email to the Center their verification responses 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 February 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2018. On February 20, 2018 the Respondent requested a copy of the Complaint and an extension of the due date for submitting the Response. The Center granted the Respondent the automatic four calendar day extension for response under paragraph 5(b) of the Rules and the new due date for Response was March 3, 2018. The Response was filed with the Center on March 3, 2018.
The Center appointed George R. F. Souter as the sole panelist in this matter on March 15, 2018. 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 has been selling menswear under the trademark BRIONI since 1945. Currently, the Complainant’s BRIONI products are sold through 70 official stores in Europe, United States, Asia and the Middle-East, as well as via an online store at “”. The categories of goods offered include men’s suits, leisure wear, leather goods, shoes, eyewear and fragrances.
Details of extensive protection of the Complainant’s BRIONI trademark internationally, including US Trademark Registration No. 0670260, registered on November 25, 1958, and International Trademark Registration No. 211621, registered on July 25, 1958, have been supplied to the Panel.
Details of extensive use of the Complainant’s BRIONI trademark internationally, including at the first men’s fashion show in history, in Florence, Italy in 1952, have also been supplied to the Panel.
The disputed domain name was registered on December 24, 2011.
The disputed domain name was registered on December 7, 2010.
The disputed domain name was registered on December 7, 2010.
According to the evidence provided by the Complainant the disputed domain names resolved to pay-per-click websites with links to websites of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain names are confusingly similar to its BRIONI trademark, including the trademark in its entirety, with the mere addition of a descriptive or non-distinctive element, “suit” and “tuxedo” respectively.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain names. In particular, the Complainant states that the Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s BRIONI trademark, and that, upon information and belief, the Respondent is not commonly known by the disputed domain names as an individual, business or other organization and “Brioni” is not the family name of Respondent.
The Complainant alleges that the disputed domain names were registered in bad faith, and are being used in bad faith.
The Complainant states that it instructed a representative to contact the Respondent to enquire as to the Respondent’s intentions in connection with the disputed domain names. A reply was received from the Respondent, stating: “I would ask a minimum of 25 k for all three considering with the right domain you get the right traffic. I have seen one cashmere coat at that price at here in Houston. They sell brionni suits, zegna, etc.” Details of this correspondence have been supplied to the Panel. The Complainant alleges that this reply indicates the Respondent’s knowledge of the Complainant’s trademark, and alleges that this offer to sell the disputed domain names for an amount greatly exceeding the cost of their registration is, in itself, evidence of use of the disputed domain names in bad faith.
The Complainant alleges that the disputed domain names are being used in connection with “pay-per-click” websites offering goods competing with those of the Complainant, which also constitutes use of the disputed domain names in bad faith. B. Respondent
The Respondent replied to the Complaint, in which the Respondent alleged that the disputed domain names are not confusingly similar to the Complainant’s BRIONI trademark. In connection with rights or legitimate interests, the Respondent advanced no arguments supporting a claim to rights or legitimate interests, merely stating that it “bought a domain”. The Respondent denies that the disputed domain names were registered and are being used in bad faith. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names be transferred to the Complainant:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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. A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicators “.com” and “.net” respectively to be irrelevant in the present case.
The Complainant has satisfied the Panel that its BRIONI trademark is well-known. It is well-established in prior decisions under the UDRP that the addition of a descriptive or non-distinctive element to a well-known trademark is not sufficient to avoid a finding of confusing similarity. In the circumstances of the present case, which deals with menswear, the Panel regards the elements “suit” and “tuxedo” respectively as clearly descriptive or non-distinctive elements, and the Panel consequently finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interest
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain names and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any evidence of rights or legitimate interests in the disputed domain names to rebut this prima facie case.
Accordingly, 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
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the only difference between the Complainant’s well-known trademark and each disputed domain name is the mere addition of a descriptive or non-distinctive element, and the fact that the Respondent was clearly aware of the Complainant’s BRIONI trademark, is sufficient to justify a finding that the disputed domain names have been registered in bad faith, and the Panel, according, finds that the disputed domain names were registered in bad faith.
It is well-established in prior decisions under the Policy that the offer of sale of a disputed domain name to a complainant for an amount greatly in excess of the cost of its registration constitutes use of the disputed domain name in bad faith. USD 25,000 for three domain names is clearly greatly in excess of the costs involved in registering these disputed domain names, and the Respondent was clearly aware of the Complainant’s BRIONI trademark and the expensive nature of the products sold under the trademark. In these circumstances, the Panel considers it appropriate to find that all three disputed domain names have been used in bad faith, and so finds.
As the Panel has found use in bad faith in connection with an offer for sale of the disputed domain names for an amount greatly in excess of the cost of their registration, he has not found it necessary to consider use of these disputed domain names in connection with pay-per-click websites where products competing with those of the Complainant are offered, which would have been an alternative ground on which the Panel could have found use of these disputed domain names in bad faith.
The Panel, accordingly, finds that the Complainant has satisfied the dual requirements of paragraph of paragraph 4(a)(iii) 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 disputed domain names , , be transferred to the Complainant.
George R F Souter
Sole Panelist
Date: April 12, 2018
Full & Egal Universal Law Academy