The Complainant is Betty Blue S.P.A., Italy, represented by Bugnion S.p.A., Italy.
The Respondent is Hugo Vis, the Netherlands, represented by Parmentier Advocaten, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name < elisabetta-franchi.nl> is registered with SIDN through Cronon AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2021. On May 3, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On May 4, 2021, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent a request to the Complainant on May 4, 2021, providing the registrant and contact information disclosed by SIDN, and inviting the Complainant to submit an amended Complaint. The Complainant submitted an amended Complaint on May 7, 2021.
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 10, 2021. In accordance with the Regulations, article 7.1, the due date for Response was May 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2021.
The Respondent sent informal email communications to the Center on June 2, 2021, claiming that he had sent a Response on May 28, 2021, which delivery failed due to technical problems, to which the Center acknowledged receipt. Accordingly, SIDN started a mediation process on June 7, 2021.
On July 1, 2021, the SIDN confirmed to the Parties and the Center that the dispute had not been resolved in the mediation process. The Respondent submitted a further submission after the mediation on July 9, 2021, which the Respondent resent on July 15, 2021, to which the Center acknowledged receipt.
The Center appointed Alfred Meijboom as the panelist in this matter on July 15, 2021. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
The Complainant is a fashion house which was established by Elisabetta Franchi in 1996. The Complainant operates a retail network which includes more than 70 mono brand stores in Europe, the Middle East, the Russian Federation and Asia, including two mono brand stores in Amsterdam and The Hague.
The Complainant is owner of International Trademark ELISABETTI FRANCHI with no. 959545 of January 14, 2008, for goods and services in classes 3, 9, 14, 18, 25, and 35, mostly for fashion related goods, which designates China, the Russian Federation and the European Union (the “Trademark”), and other trademarks incorporating “Elisabetti Franchi”.
The disputed domain name was registered on May 22, 2018, and reverted to an Internet address of the high‑end multi brand fashion store, which the Respondent owns. The disputed domain name is currently inactive. 5. Parties’ Contentions A. Complainant
According to the Complainant the disputed domain name includes the entire Trademark for which reason it is identical to the Trademark.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant had never direct contact with the Respondent and never authorized the Respondent to register the disputed domain name. Furthermore, the Complainant put forward that the Respondent has neither been commonly known by the disputed domain name, nor has he been making a legitimate noncommercial or fair use thereof.
According to the Complainant the Trademark is well known in the luxury fashion field and coincides with the designer’s name and sole director of the Complainant, so that the Respondent cannot credibly claim to have been unaware of the Trademark as the Complainant finds it is apparent that the Respondent knew that the disputed domain name is identical to the Trademark. In this respect the Complainant claims that a domain name that is identical to a famous trademark by any entity that has no relationship to that mark is in itself sufficient evidence of opportunistic bad faith registration and use, with the opportunism being the intentionally targeting of the Trademark for its revenue potential or commercial value.
Moreover, the Complainant considers the fact that the disputed domain name resolved to a website of an Amsterdam based high-end multi-brand fashion store “VLTV”, which promotes and offers for sale articles and accessories under the Trademark, as conclusive evidence that the disputed domain name has been registered in bad faith. VLVT used to have a commercial relationship with the Complainant and was authorized to sell the Complainant’s products in its Amsterdam store, but this commercial relationship has recently been interrupted, and VLVT continues to promote and commercialize clothing articles and accessories without the Complainant’s authorization. Through a holding company, the Respondent is the owner and sole shareholder of the company which operates VLTV. B. Respondent
The Respondent did not reply in substance to the Complainant’s contentions, but sent two informal communications to the Center on June 2, 2021, in the Dutch language, claiming that he has sent the Center an email on May 28, 2021, which was delayed and eventually not delivered to the Center, allegedly for a technical reason. The emails of June 2, 2021, contained a letter in Dutch to, allegedly, the Complainant’s Dutch lawyer which apparently replies to prior correspondence which was not submitted into the record and is therefore unknown to the Panelist, and which was sent on behalf of the Respondent’s company which operates the VLTV fashion store, the “Respondent’s company”). According to the Respondent, the letter, in as far as relevant to the current procedure, explained that the Respondent’s company had been purchasing the Complainant’s products from a Dutch importer of the Complainant since about 2008, and was invited by the Complainant to discuss the opening of a “Elisabetti Franchi” mono brand store in Amsterdam in 2021. The Respondent’s company has a conflict with the Complainant’s Dutch importer about resale price maintenance, which was in the Respondent’s view, illegal. The dispute resulted in cancellation of the Respondent’s company’s orders for the Complainant’s products.
The Respondent’s company further claims that the use of the disputed domain name should not be considered unlawful, as it does not suggest that Internet users are on the Complainant’s website and it is not advertising other products than those of the Complainant. In this respect the letter denies that the Trademark is well-known to the public at large, but admits that is has a reputation among a specific public, which is well aware that the Trademark is an Italian brand and that they did not arrive at the Complainant’s website through the website to which the disputed domain name reverted, but rather at the website of the Respondent’s company, which also offers clothing of many other brands. The letter apparently stresses, however, that the link takes Internet users to the landing page of the Respondent’s company’s website where only the Complainant’s products can be found and not those of a competitor.
The Respondent’s company offered to purchase products directly from the Complaint, which the Complainant apparently rejected. 6. Further submissions
The Respondent sent unsolicited submissions to the Center on June 2, 2021, and on July 9, 2021. The emails of June 2, 2021, complained about the Respondent’s email of May 28, 2021, not having been received by the Center as a result of a technical problem and submitted the letter which the Respondent’s company sent to the Claimant’s Dutch lawyer as summarized in Paragraph 5 sub B above. The email of July 9, 2021, contains a reply in substance to the Complainant’s contentions, as well as a copy of the original email of May 28, 2021, which was actually not delivered because of a typographical error in the email address, and which email of May 28, 2021, contained a request for suspension of these administrative proceedings or to declare the Complainant inadmissible in its request for mediation. The email of July 9, 2021, was resubmitted on July 15, 2021, with a copy to the Panel (see below).
Article 11.2 of the Regulations provides that the panel in its sole discretion shall determine the admissibility of unsolicited submissions. Notwithstanding a panel’s power to decide otherwise, it is well established that unsolicited submissions normally are admissible only in demonstrated exceptional circumstances that made it impossible for a party to file such submission before the deadline of the proceedings, provided such exceptional circumstances are explained in the supplemental filing (e.g., Formula One Licensing B.V. v. Louis Theunisse,WIPO Case No. DNL2009-0033; BIC Graphic Europe S.A. and Société BIC v. Alpha Holding B.V.,WIPO Case No. DNL2015-0059).
In this matter the Respondent discovered three days after the deadline to submit his Response that his email of May 28, 2021, had not been delivered. As the Center already notified Parties that it had closed the adversial part of the procedure, it seems likely that the Respondent no longer wanted to request a suspension as he did not refile its corresponding request of May 28, 2021, but rather a letter to the Complainant’s Dutch lawyer, which the Panel understands to be meant as the Response. As this Response was forwarded to SIDN pursuant to article 8.1 of the Regulations, and mediation between parties followed, the Panel shall consider the submissions of June 2, 2021, in deciding the dispute, as therefore admissible.
The unsolicited submission of July 9, 2021, on the other hand, was only filed after the conclusion of the mediation, which is too late. As an express or implied explanation of exceptional circumstances which would justify such late submission is lacking, the Panel considers it inadmissible (see also Di Claudio, Mauro, Mannozzi Alderano, D’Ottavi Adele v. Registration Private, Domains By Proxy, LLC,WIPO Case No. DNL2016-0020).
The Respondent also sent an email to the Center on July 15, 2021, to which the Panel was copied. According to article 15 of the Regulations “[n]either a party nor any person acting on behalf of a party shall have any direct contact with the panelist,” which also includes putting a panelist on copy. As this communication was not submitted in the prescribed manner through the Center, the Panel does not accept this email according to article 11.3 of the Regulations. However, on the same day the Center forwarded this further submission to the Panelist. The submission of July 15, 2021, is a copy of the unsolicited submission of July 9, 2021, which already been declared inadmissible. 7. Language of the proceedings
Article 17 of the Regulations provides that “[w]henever the complainant or the respondent neither resides nor is registered in the Netherlands, proceedings shall be conducted in the English language. In exceptional circumstances however (such as when both parties appear to have full command of the Dutch language), the Center (subject to the panel’s determination) or panel may decide that proceedings are to be conducted in Dutch, or that the complainant or the respondent may make submissions in Dutch”.
The Complainant, being an Italian company, therefore correctly filed the Complaint in the English language. The Respondent filed its emails of June 2, 2021, and accompanying letter in Dutch. The Respondent did, however, not request a change of language, and there do not seem to be exceptional circumstances which would justify such change of language.
In this matter the Complainant could have required the Respondent to submit an English translation of his communication. However, as the mediation was concluded without the Complainant having asked for a translation, the Panel, considering paragraph 6 above, shall accept the Response in the Dutch language for practical reasons, but determines that the proceedings shall be in English. 8. Discussion and Findings
Based on article 2.1 of the Regulations, a request to transfer the disputed domain name must meet three cumulative conditions:
a. the disputed domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the Complainant has rights; or
II. a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the complainant undertakes public activities on a permanent basis; and
b. the respondent has no rights to or legitimate interests in the disputed domain name; and
c. the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
With regard to the assessment of identity or confusing similarity, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is also well established precedent that the Top-Level Domain “.nl” may be disregarded in assessing confusing similarity between the trademark on the one hand and the disputed domain name on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
As owner of an International Trademark which also designated the European Union, the Complainant has rights in a trademark protected under Dutch law. The disputed domain name incorporates the Trademark in its entirety, with the mere addition of a hyphen between the two elements “Elisabetti” and “Franchi”. This does not prevent a finding of confusing similarity under the Regulations.
Consequently, the Panel finds that the Complainant has satisfied the requirement of article 2.1 sub a. of the Regulations. B. Rights or Legitimate Interests
Article 2.1 sub b. of the Regulations requires the Complainant to establish that the Respondent has no rights to or legitimate interests in the disputed domain name. This condition is met if the Complainant makes out a prima facie case that the Respondent has no such rights or legitimate interests and if the Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002).
The Complainant acknowledged that the Respondent’s company sold the Complainant’s fashion products for many years without having had direct contact with the Respondent. This is in line with the Respondent’s claim that his company sold the Complainant’s products since 2008, which it acquired from the Complainant’s importer in the Netherlands, which relationship only recently ended as a result of a dispute with said importer. The Panel understands that the Respondent considers that as the disputed domain name was used for a bona fide offering of goods and that he has a legitimate interest in the disputed domain name, which the Respondent used to revert to a subdomain of his company’s website which only offered genuine Complainant’s products for sale – although the Respondent admits that his company’s website also offers other brands which compete with the Complainant’s trademark.
Although the Complainant alleged that the Respondent is still using the disputed domain name to link to the Respondent’s company’s website, the Panel discovered that such link is currently disabled and the disputed domain name is at the time of this Decision inactive. This situation is, however, irrelevant for the finding of the Respondent’s rights to or legitimate interests in the disputed domain name as the Panel considers the situation at the moment of the filing of the Complaint as a starting point for deciding this case (e.g., Jaguar Land Rover Limited v. Range Rover Classic,WIPO Case No. DNL2015-0073).
On the basis of the facts submitted by the parties, the Panel finds that the Respondent is not an official reseller of the Complainant. That being the case, if the so-called Oki Data criteria are met, a respondent may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. In Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the panel set out four criteria in which an authorized sales or service agent of trademarked goods may use the trademark at issue in its domain name. This decision has been confirmed to be relevant for the Regulations inter alia in Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024, Maison Louis Latour v. Jos Beeres Wijnkoperij,WIPO Case No. DNL2011-0074, and Bayerische Motoren Werke Aktiengesellschaft v. Quispel Motoren,WIPO Case No. DNL2013-0026. However, according to section 2.8 of WIPO Overview 3.0, “[c]ases applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., “parts”, “repairs”, or “location”), whether at the second-level or the top-level. At the same time, the risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark.” See also generally section 2.5 of WIPO Overview 3.0. In the present case, the disputed domain name only consists of the Trademark with an irrelevant hyphen between “Elisabetta” and “Franchi”, and no descriptive term is added. The Panel therefore assumes that consumers would normally associate the Trademark, and therefore the disputed domain name, with the Complainant’s products and not in first instance with services rendered in relation thereto by a third party (however expert that party may be). The Respondent is therefore not actually offering the goods at issue in the sense of the Oki Data test (see, e.g., Trinnov Audio S.A. v. Ronald van Ovost,WIPO Case No. DNL2017-0060).
However, if the Oki Data criteria would be applied, the evidence submitted by the Complainant shows that the Respondent did not accurately and prominently display the relationship between the Complainant and the Respondent on the website to which the disputed domain name reverted, which is imperative for the Respondent to having a legitimate interest as meant in article 2.1 sub b. of the Regulations, so that the Respondent did not meet the Oki Data criteria.
Consequently, the Panel finds that the Complainant has satisfied the requirement of article 2.1 sub b. of the Regulations. C. Registered or Used in Bad Faith
Article 2.1 sub c. of the Regulations requires the Complainant to show that the disputed domain name was registered and/or is being used in bad faith.
As the Respondent registered the disputed domain name whilst being familiar with the Trademark which the disputed domain name includes in its entirely, apparently for the sole use of reverting Internet users to the Respondent’s company’s website which sells competing goods, which use is not a bone fide offering of goods as established in paragraph 8 sub B. above, the Panel is satisfied that the disputed domain name was registered and is also used in bad faith.
The Panel finds that the Complainant has satisfied the requirement of article 2.1 sub c. of the Regulations. 9. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name Alfred Meijboom 1 In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”),, it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
Panelist
Date: July 26, 2021
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