Источник информации:
официальный сайт ВОИС
Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agnona S.p.A v. Mr. Alexander Albert W. Gore
Case No. D2003-0496
1. The Parties
The Complainant is Agnona S.p.A, Vercelli, Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Alexander Albert W. Gore from the organization Ukrainian Cat. University, Lviv Rudno, Ukraine.
2. The Domain Name and Registrar
The disputed domain name is <lanerieagnona.net>, which is registered with eNom, Inc.
3. Procedural History
3.1. Issuance of the Complaint
The complaint was filed with the WIPO Arbitration and Mediation Center (the "Center"), in electronic format, on June 24, 2003. The original of the complaint together with Annexes was submitted in hard copy on June 26, 2003. Following the Center’s Notification of the Complaint Deficiency dated July 10, 2003, an amendment to the complaint was filed, with the WIPO Arbitration and Mediation Center (the "Center"), in electronic format, on July 10, 2003. The amendment was submitted in hard copy on July 14, 2003.
3.2. Confirmation on Registration Detail
On June 24, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 2, 2003, eNom answered by email, indicating that by querying, one may see the contact data for the domain name holder. The Whois result for <lanerieagnona.net> dated July 15, 2003, confirms the data regarding the domain name holder indicated in the complaint as amended. The Panel itself made verification on August 28, 2003, which also confirms the data regarding the domain name holder indicated in the complaint as amended.
3.3. Formal Requirements Compliance Check
The Center verified that the complaint as amended satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").
The Panel independently determined and agreed with the assessment of the Center that the complaint as amended is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules.
3.4. Payment of the Fees
According to paragraph 4(g) of the Policy and paragraph 19(a) of the Rules, the Complainant paid on time and in a required amount the fee for the single-member Panel.
3.5. Notification of the Complaint
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the complaint and of the commencement of the proceedings commenced on July 15, 2003.
The Notification specified, in accordance with the Rules, paragraph 5(a), August 4, 2003, as the due date for the submission of the response.
Paragraph 2(a) of the Rules provides that it is the provider’s responsibility to employ reasonably available means calculated to achieve actual notice of the Respondent. The Paragraph further provides that this responsibility is discharged:
- by sending the complaint to each of the addresses shown in the Registrar’s Whois database for the domain name holder and the technical and administrative contact and to the address supplied for the Billing contact, and
- by sending the complaint in electronic form to the respective e-mail addresses, to the postmaster at the domain name and to any address on an active web page to which the domain name resolves, and to any other addresses notified to the sender by Respondent or provided by Complainant.
The Center had sent the Notification of the Complaint and Commencement of the Administrative Procedure, by post and by email, to all the addresses shown in the Registrar’s Whois, as listed for the Respondent Alexander Albert W. Gore from the Ukrainian Cat. University and to the postmaster of the domain name.
The Panel accepts that, in the light of the information available to it, the
Center has employed all means reasonably available to it in order to achieve
notice to the Respondent and the Respondent received notice at least by one
of the means employed as to the Notification of the Complaint and Commencement
of the Administrative Procedure.
3.6. Response Default
The Respondent did not submit any response. Accordingly, the Center notified
the Respondent’s default on August 6, 2003. The message sent by email
at the address mentioned in the Registrar’s Whois, has not reached the address
due to permanent fatal errors of the address.
The fact that the message sent by email containing the Respondent’s default
Notification has not reached the Respondent cannot be considered a procedural
breach, as the notification of the Respondent’s default is not provided either
by the Policy, the Rules or the Supplemental Rules, and the Respondent had received
actual notice of the complaint, Commencement of the Administrative Procedure
and of the date until a response is due.
3.7. Constitution of the Administrative Panel
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter
on August 14, 2003.
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.
The Panel finds that the Administrative Panel was properly constituted and
appointed in accordance with the Rules and the Supplemental Rules.
3.8. Language of the Proceedings
The Panel considers that according to paragraph 11 of the Rules the language
of the proceedings is English.
4. Factual Background
Complainant is an internationally well-known company in the field of wool,
as a manufacturer, its mill providing designers such as Ralph Lauren, Calvin
Klein, Chanel and Versace with finest cashmere, camel, mohair, alpaca and vicuna
fabrics, and recently as a fashion house, with shops all over the world, as
it states on its website "www.agnona.com."
The Complainant is the owner of several international trademarks including
the words AGNONA and AGNONA LANERIE, the oldest of them dating back to 1954,
as:
• Italian registration for AGNONA LANERIE No. 00678357, whose first application
dates back to 1954
• International registration for AGNONA LANERIE No. 703.193 from June 6, 1998,
which extends its protection, inter alia, to Ukraine.
These are uncontested facts, which result from the appendixes to the complaint.
Besides the trademark registrations, an Internet search for Agnona or Lanerie
Agnona resolves to the Complainant’s website "www.agnona.com" or to
websites with information regarding the Complainant and its business.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
I. The domain name <lanerieagnona.net> is confusingly similar with the
trademarks and trade name AGNONA and LANERIE AGNONA owned by Complainant.
II. The Respondent has no rights or legitimate interests in respect of the
domain name, because:
- there is no evidence, before the dispute, of Respondent’s use of, or demonstrable
preparation to use, the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods or services;
- the Respondent has never been commonly known by the domain name, nor did
he do business under the domain name;
- there is no evidence that Respondent is making a legitimate non-commercial
or fair use of the domain name.
III. The Respondent registered and used the disputed domain name in bad faith
because:
- there is no way that the Respondent has not been aware of the famous trademarks
and trade names AGNONA and LANERIE AGNONA, as the association between AGNONA
and LANERIE is uniquely found in Complainant’s trademarks and trade names;
- the Respondent operates in bad faith also because he registered other domain
names corresponding to internationally well-known Italian trademarks: for example,
<astispumante.net>, <elenamiro.net>, <ferrari-scuderia.net>,
<nutellaferrero.com>, <parcosrl.com>, <zegnaermenegildo.net>
for the same purpose as the disputed domain name, namely to use them as openers
for pornographic portals (in Italian), selling various services connected with
pornography;
- the domain name is used in bad faith, as mentioned, the default page of <lanerieagnona.net>
resolves to a pornographic portal (in Italian), selling various services connected
with pornography. The redirection to pornographic sites from a domain name incorporating
a well-known trademark is, per se, evidence of bad faith and constitutes a case
of "pornosquatting";
- at the request of the Complainant’s attorneys to transfer the disputed domain
name and another domain name which is the subject matter of a separate proceeding,
the Respondent offered to sell one for 25,000 USD or both of them for 40,000
USD. Such an offer proves, in the Complainant’s opinion, the intent of the Respondent
to sell the disputed domain name for an amount in excess of out-of-pocket costs.
B. Respondent
Properly notified according to paragraph 2(a) of the Rules, the Respondent
did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable."
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
A. that the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
and
B. that the Respondent has no rights or legitimate interests in respect of
the domain name; and
C. that the domain name has been registered and is being used by the Respondent
in bad faith.
Paragraph 5(e) of the Rules instructs the Panel that:
"if a respondent does not submit a response, in the absence of exceptional
circumstances, the panel shall decide the dispute based upon the complaint."
Further paragraph 14(b) of the Rules instructs the Panel that: "If a Party,
in the absence of exceptional circumstances, does not comply with any provision
of, or requirement under, these Rules or any request from the Panel, the Panel
shall draw such inferences therefrom as it considers appropriate."
A. Identical or Confusingly Similar
The record shows that the Complainant holds several registrations all over
the globe in the mark Agnona and Agnona LaneriE, some registrations in Italy
for example, dating from 1954. Also the record shows that the Complainant has
reflected the mark AGNONA in its own active domain name <agnona.com>.
In Italian, "laneria" means, as the eleventh edition of "Il
Nuovo Zingarelli - Vocabolario della lingua Italiana," states, a fabric
made out of wool or a wool fabrics shop or warehouse, while the word "agnona"
is not listed in the mentioned vocabulary, the most popular dictionary in the
Italian language.
Therefore, even if a part of the disputed domain name could be considered descriptive,
such a description combined with the word "agnona" becomes a unique
association of words, as the Complainant contends, associated with the Complainant’s
business, the Complainant’s business being known under this name.
Further, there is no indication that "agnona lanerie" is a common
generic term for the class of goods or services provided by the Complainant,
also because of the popularity of the Complainant’s business. An Internet search
(as the Panel conducted) for the words "agnona lanerie," which corresponds
to the Complainant’s mark, resolves to several addresses, all of which contain
references to the Complainant’s business.
As the Complainant contends, the disputed domain name is confusingly similar
to the Complainant’s mark "AGNONA LANERIE."
The main difference between the disputed domain name and Complainant’s mark
is the reverse order of the two words which form the mark. This does not render
the disputed domain name distinctive from the Complainant’s trademark (See,
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna
Corporation v. Alexander Albert W. Gore, WIPO
Case No. D2003-0483).
As the Panel stated in the prior-mentioned decision, the fact that the disputed
domain name resolves to a portal in Italian language, exacerbates the confusion
created by the discussed similarity.
The Panel finds that the addition of the generic top-level domain "net"
is without legal significance and does not render the disputed domain name different
from the Complainant’s trademark.
For the reasons above, the Panel finds that the disputed domain is confusingly
similar to the Complainant’s mark AGNONA LANERIE.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides three non-exclusive circumstances that
can demonstrate that the Respondent has rights to or legitimate interests in
the domain name:
(i) before any notice to the Respondent of the dispute, his 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, even if he has acquired no 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.
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has
no rights to or legitimate interests in the domain name.
In the absence of any response, once a Complainant establishes a prima facie
showing that none of the three circumstances establishing legitimate interests
or rights apply, the burden of proof on this element shifts to the Respondent
to rebut the showing, as other prior UDRP panels have accepted (See
Document Technologies, Inc. v. International Electronic Communications, Inc.,
WIPO Case No. D2000-0270, Chanel,
Inc. v. Estco Technology Group, WIPO
Case No. D2000–0413, The Sportsman’s Guide, Inc. v. Vipercom, WIPO
Case No. D2003-0145.
Silence of the Respondent might be an indication that he has no rights or legitimate
interests in respect of the disputed domain name. (See Edgar Rice Burroughs,
Inc. v. Adtel Communications, WIPO Case
No. D2000–0115, Singapore Airlines Limited v. European Travel Network,
Wipo Case No. D2000–0641, Bayerische
Motoren Werke AG v. Null, WIPO Case No.
D2002-0937).
Having considered the prior practice of UDRP panels, in the present case, the
Panel finds that the Complainant established a prima facie showing that
the Respondent has no rights to or legitimate interests in the disputed domain
name.
The Panel, referring to the Respondent, has no indication whatsoever of any
demonstrable preparations to use the disputed domain name in connection with
a bona fide offering of goods or services.
There are no references to the disputed domain name on the web page accessed
by it. In fact, the web page accessed by the disputed domain name is a pornographic
one named "www.web.sex.it" (in Italian), selling various services
connected with pornography.
The Panel does agree with other Panels (See Motorola, Inc. vs NewGate Internet,
Inc., WIPO Case No. D2000-0079)
that many adult sites are perfectly legal and constitute bona fide offering
of goods or services, but in the present case, as the Complainant contends,
there is no connection between the disputed domain name and the website accessed
by the disputed domain name.
Besides this, there is no indication on the website "www.lanerieagnona.net"
that the disputed domain name is used as a "cybermark," in which the
Respondent would have legitimate rights or interests.
The contentions of the Complainant, which have not been disputed by the Respondent,
show that the Respondent is not a licensee of the Complainant and no permission
or consent has been granted to the Respondent to use the agnona lanerie mark
or to apply for any domain name incorporating this mark.
At the same time, the Panel cannot find that the Respondent was using the domain
name in the descriptive sense, describing the types of businesses listed on
the website to which the domain name resolves, as prior UDRP panels have recognized
that it may be considered as evidence for legitimate rights and interests of
the Respondent in the disputed domain name. (See Sweeps Vacuum & Repair
Center, Inc. v. Nett Corp., WIPO Case
No. D2001–0031), because, even if the disputed domain name contains the
generic word "laneria," this word is not used to describe the Respondent’s
website activities. The website operated by the Respondent could have been active
to any other nomination, as it has nothing in common with the wool fabrics field,
in which the Complainant operates.
Moreover, related to the fact that the Respondent failed to submit a response
to the Complainant’s allegations, the Panel will not, in these circumstances,
draw an inference that Respondent, prior to notice of a dispute, made demonstrable
preparations to use the disputed domain name for a bona fide offer of goods
or services.
Additionally, the Respondent is not commonly known by the domain name <lanerieagnona.net>,
especially because his name or the name of the organization shown in the Registrar’s
Whois does not include any of the words used in the disputed domain name, and
also because the Respondent does not prove that he holds a trademark LANERIE
AGNONA, AGNONA or LANERIE for the types of services offered on its website.
As regarding the circumstance provided by paragraph 4(c)(iii), there is no
evidence that the Respondent is making a legitimate noncommercial or fair use
or is making an educational, political satirical or other use of the disputed
domain name for the purposes of free speech or any other recognized category
of fair use.
It is obvious that the website accessed by the disputed domain name sells the
pornographic services offered.
For the above said considerations and taking into account the failure of Respondent
to file a response to the Complainant’s allegations, the Panel finds that the
Respondent has no legitimate rights to or interests in the disputed domain name.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) provides
that 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 that Complainant, for
valuable consideration in excess of his 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 he 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 his 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 his website or
location or of a product or service on your website or location.
Even if the Panel is not limited to the circumstances provided by paragraph
4(b), the Panel considers that the provisions of paragraph 4(b)(i) and 4(b)(iv)
of the Policy are applicable in the present case and it shall not go further
in analyzing the remaining circumstances provided by paragraph 4(b).
The Panel shall analyze first the applicability in the present case of paragraph
4(b)(iv) of the Policy, and then the applicability of 4(b)(i) of the Policy.
Applicability to the present case of paragraph 4(b)(iv) of the Policy
Considering the complaint and the evidence submitted in the case, the Panel
finds that the Respondent has intentionally attempted to attract, for commercial
gain, Internet users to his website, by creating a likelihood of confusion with
the Complainant’s mark as to the source and affiliation, or endorsement of his
website or location.
The application of the paragraph 4(b)(iv) of the Policy, implies in the present
case two elements of equal legal significance: awareness by the Respondent of
the Complainant’s long-standing trademark at the moment of registration of the
disputed domain name and registration and use of the disputed domain name for
commercial gain.
The first element is obvious as the record shows that the Complainant holds
several registrations all over the globe in the mark Agnona and Agnona LaneriE,
some registrations in Italy for example, dating from 1954. An Internet search
(as the Panel conducted) for the words "agnona lanerie," which corresponds
to the Complainant’s mark, resolves to several addresses, which contain references
to the Complainant’s business. Therefore there is no way that the Respondent
could have ignored the fact that the expressions "lanerie agnona"
or "agnona lanerie" are used for describing the business of the Complainant.
A circumstance in the favor of the assertion that the Respondent was aware
at the time of registration of the Complainant’s mark, is the fact that the
Respondent has registered with some variations domain names corresponding to
other well-known trademarks such as Nutella, Ferrari, Astispumanti and Sparco.
These domain names were registered on the same day as the registration of the
disputed domain name. The Complainant contended, and the Panel verified, that
the Respondent’s domain names resolve to different pornographic sites connected
to the pornographic site accessed by the disputed domain name. The connection
is obvious as the beginning of the web address to which the mentioned domain
name registered by the Respondent and the disputed domain name resolves, is
the same "www.web.sex.it/locale."
The Respondent’s conduct is a classic example of "opportunistic bad faith"
as other panels found in similar situations (See Parfums Christian Dior v.
Javier Garcia Quintas and Christiandior.net, WIPO
Case No. D2000-0226; Banca Sella s.p.a v. Mr. Paolo Parente, WIPO
Case No. D2000-1157, Expedia, Inc. v. European Travel Network,
WIPO Case No. D2000-0137).
The second element which sustains the applicability of paragraph 4(b)(iv) of
the Policy to the present case, namely the use of the disputed domain name for
commercial gain, is also obvious.
Applicability to the present case of paragraph 4(b)(i) of the Policy
Even if the applicability of paragraph 4(b)(iv) of the Policy to the present
case would be considered enough to support the bad faith of the Respondent in
registering and using the disputed domain name, the Panel considered that some
consideration on the offer made by the Respondent to the Complainant in relation
to the sale of the disputed domain name is required.
At the request of the Complainant’s attorneys to transfer the disputed domain
name and another domain name, which is the subject matter of a separate proceeding,
the Respondent offered to sell one of them for 25,000 USD or both for 40,000
USD.
The excessive price requested by the Respondent to sell the disputed domain
name to the Complainant, corroborated with the fact that he registered as domain
names different well-known trademarks, may be a strong indication that the Respondent
primarily registered the disputed domain name with the purpose of selling the
domain name registration to the Complainant, who is the owner of the trademark,
for valuable consideration in excess of his documented out-of-pocket costs directly
related to the domain name.
Therefore, the Panel concludes that the disputed domain name was registered
and used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the domain name, <lanerieagnona.net>,
be transferred to the Complainant.
Beatrice Onica Jarka
Sole Panelist
Dated: August 28, 2003