The Complainant is Etro S.p.A. of Milan, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Kevin Sun of Bellevue, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2013. On June 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2013, the Registrar transmitted by email to the Center its verification response indicating that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 27, 2013. 1
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy for .ME, approved by doMEn on October 1, 2012 (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 the Respondent of the Complaint, and the proceedings commenced on July 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2013.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 25, 2013. 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 a well-known company in the fashion industry, based in Milan, Italy. It is owner of the ETRO trademark registered in various countries around the world (Annexes E and F to the Complaint).
Among several others, the Complainant is the owner of the international trademark registrations Nos. 610968 and 610967 for ETRO, both filed on November 22, 1993 and duly renewed until November 22, 2013, in classes 8, 9, 14, 19, 20, 21, 23 and 28 and in classes 3, 18, 24 and 25, respectively (Annex F to the Complaint).
In addition, the Complainant also owns several domain names incorporating the ETRO mark in several gTLDs and ccTLDs, such as: , , , , , , (Annex G to the Complaint).
The disputed domain name, , was registered on January 30, 2012 and the website relating to it at one point displayed links to online retail websites as well as to luxury related websites (Annex I to the Complaint). The disputed domain name currently resolves to a Sedo parked page with third party advertising. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical to its trademark and domain names.
Furthermore, the Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:
(i) the Respondent’s name is “Kevin Sun” and therefore unrelated to ETRO;
(ii) no license or authorization has been given by the Complainant to the Respondent to use the ETRO trademark;
(iii) to the best of Complainant’s knowledge the Respondent is not commonly known as ETRO, and
(iv) the Respondent is not using the disputed domain name in a fair or noncommercial way.
As to the bad faith element in the registration and use of the disputed domain name, the Complainant argues that such can be found in view of the following circumstances:
(i) the Respondent registered a domain name that is identical to a well-known trademark which indicates that the Respondent had knowledge of Complainant’s trademark at the time of the creation of the disputed domain name and thus characterizes its registration in bad faith;
(ii) the disputed domain name is being used to generate traffic to websites with sponsored links which are related to the Complainant’s business, i.e. fashion products (Annex I to the Complaint), also allowing for Complainant’s competitors’ websites to be accessed through the links available at the webpage relating to the disputed domain name (what in itself can cause damages to the Complainant’s trademark).2 B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established rights in the ETRO trademark duly registered in dozens of countries (Annexes E and F to the Complaint).
Therefore the Panel finds that the disputed domain name, , reproduces the Complainant’s trademark in its entirety. The first element of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is 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, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108). Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that no license or authorization was given for the use of ETRO in the disputed domain name.
Also, the absence of any indication that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, further demonstrate the absence of rights or legitimate interests in the disputed domain name.
According to the print-outs of the website at the disputed domain name (Annex I to the Complaint) the disputed domain name was previously being used to generate traffic to websites with sponsored links related to the Complainant’s business, i.e. fashion products, also allowing for Complainant’s competitors websites to be accessed through the links available at the webpage relating to the disputed domain name. Such use can indeed mislead Internet users for commercial gain by profiting from the confusing reproduction of the Complainant’s mark in the disputed domain name. The disputed domain name currently resolves to a Sedo parked page with third party advertising. The Panel finds that neither use constitutes a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of the domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the use of the disputed domain name in connection with a webpage containing sponsored links related to fashion products and the use in connection with a Sedo parked page with third party advertising can indeed mislead Internet users for commercial gain by profiting from the confusing similarity between the disputed domain name and the Complainant’s mark.
The above in this Panel’s view constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s well known trademark and therefore evidences bad faith.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration and use of the disputed domain name.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 name, be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: August 5, 2013
1 On June 11, 2013, the registrant of the disputed domain name appeared to be an unrelated third party. On June 17, 2013, the WhoIs record showed “Kevin Sun” as the registrant. On June 20, 2013, the Registrar confirmed “Kevin Sun” as the registrant of the disputed domain name. On June 27, 2013, the Complainant filed an amendment to the Complaint naming the Respondent as “Kevin Sun”.
2 The Panel notes that the use of the disputed domain name has subsequently changed and currently resolves to a Sedo parked page with third party advertising.
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