The Complainant is Oleg Cassini, Inc., United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.
The Respondent is Domain Administrator, DVLPMNT MARKETING, INC., Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2021. On April 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 30, 2021, the Registrar transmitted by email 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 email communication to the Complainant on May 3, 2021, 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 May 4, 2021. The Center verified that the Complaint together with the amended 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 May 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2021. The Center appointed Mathias Lilleengen as the sole panelist in this matter on June 3, 2021. 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 offers luggage and extensive lines of clothing and accessories for men, women, and children. The use of the OLEG CASSINI and CASSINI trademarks dates back to the 1950’s and represents extensive sales over the past seven decades. The Complainant’s goods are sold throughout the world. The Complainant owns trademark registrations in the trademarks OLEG CASSINI and CASSINI in several countries, for example United States trademark registration number 887533, registered on March 11, 1970. According to the Registrar WhoIs, the Domain Name was registered on December 10, 2005. The Complainant has provided evidence showing that the Domain Name has resolved to a website for weight loss, and later to a pay-per-click webpage with links to different types of providers offering different type of luggage pieces. At the time of the drafting the Decision, the Domain Name resolved a pay-per-click webpage. 5. Parties’ Contentions A. Complainant The Complainant provides evidence of its trademark registrations. The Complainant argues that the Domain Name is confusingly similar to the Complainant’s trademark. It incorporates the entirety of the Complainant’s trademark, and only adds the common industry term “luggage”. The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name and the Domain Name is not the trade name or company name of the Respondent. The Respondent cannot establish rights in the Domain Name, as it has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent´s use of the Domain Name to redirect to a pay-per-click website with links to third-party websites offering services that directly compete with the Complainant is not bona fide. The Complainant argues that the Respondent registered the Domain Name with either actual or constructive knowledge of the Complainant’s trademarks. The Complainant believes that the Respondent receives payment for redirecting to third party sites. Such conduct evidences bad faith. Moreover, the Complainant documents that the Respondent has a history of adverse UDRP decisions. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established that it has rights in the trademark OLEG CASSINI. The test for confusing similarity involves the comparison between the trademark and the Domain Name. The Domain Name incorporates the Complainant´s trademark, with the addition of “luggage”. The addition does not prevent a finding of confusing similarity. For the purpose of assessing the confusing similarity test under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domains (“gTLD”); see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of the Complainant’s trademark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Name, as it has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Respondent’s use of the Domain Name is not bona fide. Furthermore, the nature of the Domain Name, comprising the Complainant’s trademark and a related term, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Based on the Complainant submissions, the Panel finds that the Respondent has registered and used the Domain Name to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark. The Respondent has not provided any evidence of good-faith use, and the Complainant’s trademark is registered and well known from long before the Respondent registered the Domain Name. The Respondent’s use of the Domain Name to take advantage of the reputation of the Complainant’s trademark in order to obtain click-through-revenue by redirecting visitors to third-party websites offering services that directly compete with the Complainant points to bad faith. Moreover, the Respondent has a history of adverse UDRP decisions. For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning 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 Domain Name Mathias Lilleengen
Sole Panelist
Date: June 7, 2021
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