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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fendi Adele S.R.L. v. Paul Disley / Im Flying

Case No. D2006-1504

 

1. The Parties

The Complainant is Fendi Adele S.R.L., Rome, Italy, represented by Massimo Cimoli of Simone & Partners S.p.A., Italy.

The Respondent is Paul Disley, Im Flying, Liverpool, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <fendi-cologne.info> is registered with RegisterFly.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2006. On November 27, 2006, the Center transmitted by email to RegisterFly.com, Inc. a request for registrar verification in connection with the domain name at issue. In response to several reminders from the Center, RegisterFly.com, Inc. transmitted by email to the Center its verification response on December 18, 2006, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to two separate notifications by the Center that the Complaint was administratively deficient, the Complainant filed amendments to the Complaint on December 22, 2006 and January 3, 2007. 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 (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”).

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 January 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2007.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on January 31, 2007. 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. On February 20, 2007, the Panel requested the Complainant to submit additional information. Accordingly the decision due date was extended to March 1, 2007.

 

4. Factual Background

The Complainant is known globally as a prominent designer and manufacturer of clothing products and accessories in the field of luxury fashion. Besides, FENDI has developed perfumes and cosmetics products.

The Complainant states that it is the owner of numerous trademarks and has provided copies of trademarks among which:

- United States word trademark FENDI n° 1244466 filed on October 29, 1976 (renewed) for goods in classes 18 and 25;

- United States figurative trademarks FENDI + logo n° 1433773 filed on December 24, 1985 (renewed) for goods in classes 14, 16 and 34 and n° 1439955 filed on December 24, 1985 for goods in classes 18, 24 and 25.

The Complainant states that it has owned the domain name <fendi.com> since December 26, 1995.

Besides, as regard to the list attached by the Complainant to its Complaint, the Complainant is also the owner of many others FENDI trademarks around the world. However, and despite the Panel order, the only evidence provided by the Complainant concerned American trademarks. Consequently, after reviewing said list, the Panel carried out additional searches among public databases determined that the Complainant also olds the followings trademarks:

- Community word trademark FENDI n° 03500535 filed on October 31, 2003 for goods in classes 3, 9, 14, 18, 25;

- UK word trademark FENDI n° 1024578 filed on February 6, 1974 (renewed) for goods in class 25 and namely articles of clothing for men.

The disputed domain name <fendi-cologne.info> was registered on July 31, 2006, with RegisterFly.com and is currently being held by the Respondent.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name is constituted of the trademark FENDI followed by a generic term referring to perfumes.

The Complainant claims that the Respondent offers to sell FENDI’s products and other fashion designer’s products and as a fact is using the disputed domain name to attempt to attract, for financial gain, Internet users by creating a likelihood of confusion with the FENDI trademark.

The Complainant states that Respondent registered the domain name in dispute in 2006 and at this time, FENDI was already a very well - known trademark. Besides it contends that the Respondent has no right on the name or trademark FENDI.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The 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 domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has trademark rights in the name FENDI.

The first element that the Complainant must establish is that the domain name is identical or confusingly similar to the Complainant’s trademarks. The disputed domain name incorporates the trademark FENDI with the mere addition of the descriptive term “cologne”.

It is well established that when a domain name incorporates a registered trademark, with the addition of a descriptive term, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

There have been many UDRP decisions involving domain names where a suffix has been added to a trademark, or a name closely resembling a trademark. These suffixes have included the name of a product associated with the trademark (<guinessbeer.com>, Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020, March 22, 2001), a service associated with the trademark (<christiesauction.com>, Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., WIPO Case No. D2001-0075, March 6, 2001), complementary qualities to those associated with the trademark (<viagraconfidential.com>, Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870, December 31, 2003).

The comparison between the disputed domain name and the Complainant’s trademark reveals the following:

- <fendi-cologne.info> is composed of the Complainant’s trademark FENDI combined with the generic term “cologne”.

- The domain name includes the “.info” suffix.

Considering the first part, the Panel finds that the domain name clearly relates to the Complainant’s trademark, as in the disputed domain name, the generic term “cologne” is just an addition to the Complainant’s trademark FENDI.

Moreover, such a generic term is clearly related to the Complainant’s activity. Therefore, consumers and Internet users will be confused and misled into thinking that the domain name at issue belongs to the Complainant, due to the combination of a widely known trademark and a generic term clearly linked with the Complainant’s activities. The above mentioned approach has been taken in many UDRP decisions such as Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 and Auchan v. Cantucci Commercial Corp., WIPO Case No. D2005-1195.

Furthermore, such confusion is increased as the Complainant is the owner of widely known trademarks.

The second difference between the trademark FENDI and the domain name is the addition of “.info”. This is a gTLD and is due to the technical specificities of the domain name system. This inclusion is not taken into account in evaluating the identity or similarity between the disputed domain name and the Complainant’s trademark (New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 and A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172).

As a consequence, the Panel finds that the domain name is confusingly similar to the trademark FENDI owned by the Complainant. Therefore, the Panel determines that the condition set out by Paragraph 4(a)(i) of the Policy has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out examples of what a Respondent may demonstrate to show that it has rights or legitimate interests in respect of 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 non-commercial 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 Panel is of the opinion that there is no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark under any circumstance.

Furthermore, several UDRP decisions have established that, once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests, the burden is on the Respondent to prove any right or legitimate interest in the domain name (Southcorp Limited v. Frontier Direct Pty Ltd., WIPO Case No. D2004-0949, <penfoldsgrange.net>, and Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753).

Based on the foregoing, the Panel finds that the Respondent has no right or legitimate interest in said domain name. Consequently, the Panel considers that the condition set out by Paragraph 4(a)(ii) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

It is important to remember that the Complainant must clearly show that: (a) the domain name was registered by the Respondent in bad faith and, (b) the domain name has been used by the Respondent in bad faith (Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001).

Registered in bad faith

The domain name is composed of the Complainant’s trademark with the addition of the generic term “cologne”. Said generic term evokes the goods offered by the Complainant and associated with the mark.

Besides, the Complainant’s trademarks are widely known. Previous Panels have recently considered that Respondent’s bad faith could be presumed regarding the fame of the Complainant (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088, <mobileatt.com> “Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto”).

Consequently, it is reasonable to conclude that the Respondent was probably aware of the Complainant’s trademark when it registered the domain name at issue.

These findings lead the Panel to conclude that the domain name in dispute has been registered in bad faith by the Respondent.

In order to meet the requirement of paragraph 4(b) of the Policy, it is not sufficient to prove that the domain name is registered in bad faith, it is also necessary to prove that the domain name is being used in bad faith.

Used in bad faith

The Respondent’s domain name diverts Internet users wishing to search the Complainant’s marks to the Respondent’s website which includes links to other websites offering the same products than those of the Complainant through the use of a domain name identical or at least confusingly similar to the Complainant’s marks and domain name.

Besides, paragraph 4(b)(iv) of the Policy lists as an evidence of bad faith that by using the domain name the Respondent had intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.

Numerous panels have also held that using a domain name confusingly similar to a Complainant’s mark to link to websites of competitors constitutes bad faith:

- WIPO Case No. D2004-0537, Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan “Complainants persuasively argue that Respondent has registered and used the Disputed Domain Name in bad faith. Specifically, Complainants argue that Respondent’s bad faith is reflected in the fact that, with both constructive and actual knowledge of Complainants’ trademark rights, Respondent redirected web traffic from the Disputed Domain Name to one of Staples’ chief competitors; uses a typosquatted, i.e., confusingly similar domain name; and nothing in the record suggests that Respondent has a bona fide reason for Respondent’s choice of a domain name that is confusingly similar to Complainants’ trademarks and company name”.

- WIPO Case No. D2001-1319, Edmunds.com v. Ult. Search, Inc., “registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy”.

- WIPO Case No. D2000-1768, NetWizards, Inc. v. Spectrum Enterprises, “registration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the Complainant, from the Complainant’s website to the website of […] a company which directly competes with the Complainant, constitutes bad faith registration and use”;

- WIPO Case No. D2000-0037, Zwack Unicom Ltd v. Duna, March 10, 2000. Respondent’s linking to the Complainant’s competitor held to constitute bad faith;

- NAF Case No. FA 95940, Oly Holigan, L.P. v. Private, finding bad faith where Respondent used the disputed domain name to “redirect Complainant’s consumers and potential consumers to commercial websites which are not affiliated with Complainant”;

- NAF Case No. FA 95648, Marriott International, Inc. v. Kyznetsov, October 24, 2000: finding bad faith where respondent registered the domain name <marriottrewards.com> and used it to route Internet traffic to another website that “promotes travel and hotel services […] identical to the services offered by the Complainant”.

Based on the above, the Panel finds that the domain name has been registered and used in bad faith.

As a result, the Panel finds that the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.

 

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 <fendi-cologne.info> be transferred to the Complainant.

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Nathalie Dreyfus
Sole Panelist

Dated: March 1, 2007