The Complainant is Golden Lady Company S.p.A. of Castiglione Delle Stiviere, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Contact Privacy Inc. Customer 0148913115 of Toronto, Canada / Avi Sharifi, Philippe Matignon, New York, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2018. On March 23, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On March 23, 2018, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to the Complainant on April 4, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 9, 2018.
The Center verified that the Complaint together with the amended Complaint (hereafter 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 PolicyUniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution PolicyUniform 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 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2018. The Center received an informal communication from the Respondent on April 13, 2018, indicating its willingness to transfer the Domain Name. The Center sent the Parties possible settlement e-mail on April 13, 2018, but no suspension was requested by the Complainant. On May 1, 2018, the Center notified the Parties of the Commencement of Panel Appointment Process. On May 1, 2018, the Center received a further informal communication from the Respondent, indicating that it is trying to resolve the dispute. On May 2, 2018, the Center sent the Parties another possible settlement e-mail, but no suspension was requested by the Complainant.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 11, 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 is an Italian company founded in 1967 which is active in the field of design, manufacture and retail of hosiery and underwear. It operates 12 production sites in Italy, the United States and Serbia, which produce 400 million tights per year, which are distributed in 70 countries worldwide.
The Complainant is the owner of, amongst other marks, a United States trademark registration for PHILIPPE MATIGNON (the “PM Mark”), from April 9, 1996 (registration number 1,967,299) for “hosiery, pantyhose, socks and stockings”. The PM Mark is said to have been first used in commerce on March 22, 1995.
The Domain Name was registered on August 8, 2017. It is presently inactive but prior to the commencement of this proceeding resolved to a website that purported to offer the Complainant’s Philippe Matignon hosiery for sale (“Respondent’s Website”). The Respondent is the legal representative of a United States company known as Revival Brands LLC. Prior to April 7, 2015 Revival Brands LLC was the former distributor of the Complainant’s products in the United States. The distribution agreement between the Complainant and Revival Brands LLC included a clause limiting the right of Revival Brands to register domain names containing the PM Mark and requiring that Revival Brands transfer any registered domain name containing the PM Mark to the Complainant following the termination of that agreement. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s PM Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and are being used in bad faith.
The Complainant is the owner of the PM Mark, having registered the PM Mark in the United States and the European Union. The Domain Name consists of the PM Mark along with the geographical term “us” referring to the United States. This increases the likelihood of confusion for consumers seeking the Complainant’s products from a website targeting the United States market.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, rather it is known as Avi Sharifi doing business as Revival Brands LLC, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent has been using the Domain Name to operate the Respondent’s Website which purports to sell the Complainant’s products but does not disclose the relationship between the Complainant and the Respondent in a way that could exclude consumer confusion as to the source, sponsorship, affiliation or endorsement.
The Domain Name was registered and is being used in bad faith. The Respondent is a former distributor of the Complainant and was aware that it had no rights to register the Domain Name. By using the Domain Name for website that copies the look and feel of the Complainant’s website the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s Website, by creating a likelihood of confusion with the Complainant’s PM Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. B. Respondent
The Respondent did not reply in any substantive way to the Complainant’s contentions. Each of the Respondent’s communications with the Center simply indicated that the Respondent wished to resolve the dispute, but did not provide any additional information about the Respondent. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the PM Mark, having registrations for the PM Mark as a trademark in the United States.
The Domain Name incorporates the PM Mark in its entirety with the addition of the geographic term “us”, short for United States, which is insufficient to dispel the impression of confusing similarity created by the incorporation of the PM Mark.
An individual viewing the Domain Name may be confused into thinking that the Domain Name refers to a site in some way connected to the Complainant, targeted at consumers in the United States. The Panel finds that the Domain Name is confusingly similar to the Complainant’s PM Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the PM Mark or a mark similar to the PM Mark. The Respondent is a former distributor of the Complainant and, while the distribution agreement was not in effect at the time the Domain Name was registered, the Panel notes that the distribution agreement specifically prohibited such registrations without approval, none having been provided.
The Panel is not satisfied that the Respondent is commonly known by the Domain Name or any similar name. While the registration details refer to the registrant organisation being “Philippe Matignon” the Complaint identifies the actual respondent as being “Avi Sharifi” doing business as “Revival LLC”. The Respondent has provided no evidence that it is commonly known as “Philippe Matignon” or that any such entity exists. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Domain Name is presently inactive but prior to the commencement of proceedings the Respondent has used the Domain Name to operate a website that purports to sell the Complainant’s products under the PM Mark. It is unclear whether the products sold under the Respondent’s Website are the Complainant’s products or copies. If the latter, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s PM Mark for a site selling counterfeit products.
Even if the Respondent is offering genuine Complainant products from the Respondent’s Website, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. v. A. ASD, Inc.,WIPO Case No. D2001-0903.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner:
“… Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather it is prominently uses the Complainant’s various trademarks and at the bottom of the Respondent’s Website states “Copyright © 2017 Philippe Matignon”, which is not the actual identity of the Respondent. No disclaimer is provided to the effect that the Respondent is not the Complainant or an authorized dealer. Even in the event that the Respondent is reselling genuine Complainant products, its use of the Domain Name for the Respondent’s Website does not grant it rights or legitimate interests in the Domain Name.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of any such submissions the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; ;or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the PM Mark at the time the Domain Name was registered. The Respondent was a former distributor of the Complainant. In the circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent registered the Domain Name for the purposes of operating a website that impersonated a website operated by the Complainant specifically to sell either the Complainant’s hosiery or counterfeit hosiery that competes with the Complainant’s products (in the sense that it implied it was an official site for Philippe Matignon tights and failed to provide a disclaimer otherwise). The Respondent is using the Domain Name that is confusingly similar to the PM Mark to sell products, be they legitimate or otherwise, in competition with the Complainant and without the Complainant’s approval. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s PM Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: May 25, 2018
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