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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fendi Adele S.r.l. v. SpeedyWeb

Case No. D2006-1602

 

1. The Parties

The Complainant is Fendi Adele S.r.l., Italy, represented by Massimo Cimoli de Simone & Partners S.p.A., Italy.

The Respondent is SpeedyWeb, New Orleans, LA, United States of America.

2. The Domain Name and Registrar

The disputed domain name <fendibags.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2006. On December 20, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On December 27, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details for the administrative, billing, and technical contacts. The Center verified that 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 10, 2007. In accordance with the Rules, paragraph 5(a), the deadline for Response was January 30, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2007.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 7, 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 22, 2007, the Complainant submitted a Supplemental Filing to the Center which was acknowledged. The Panel has determined that in the circumstances it is not necessary for it to have regard to the Complainant’s supplemental filing.

4. Factual Background

The Complainant is well-known internationally as a prominent designer and manufacturer of clothing products and accessories in the field of luxury fashion.

According to the annexes submitted with the Complaint, the Complainant states that it is the owner of a number of trademarks and has provided copies of such trademarks among which:

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

- American 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 is the owner of the domain name <fendi.com> since December 26, 1995.

The disputed domain name <fendibags.com> was registered on January 29, 2002, with Intercosmos Media Group d/b/a directNIC.com and is currently being held by the Respondent.

5. Parties’ Contentions

A. Complainant

Complainant considers that domain name is constituted of the trademark FENDI followed by a generic term referring i.e. “bags”. Furthermore, it states that “bags” represent the most important part of products sold by its business.

Consequently, a consumer wishing to buy a FENDI bag will be necessarily attracted by said domain name.

Besides, Complainant claims that Respondent offers to sale FENDI’s products and other fashion designer’s products on the first page and that it constitutes a clear unauthorized commercial exploitation.

Complainant explained that Respondent registered the disputed domain name in 2002 and that at this time, FENDI was already a very well-known trademark. Besides it considers that Respondent has no right in the name or trademark FENDI. Furthermore, Complainant is the owner of trademarks registered by it for more than 20 years.

Complainant claims that Respondent is using the disputed domain name to attempt to attract, for financial gain purposes, Internet users by creating a likelihood of confusion with the FENDI’s trademark. It considers said behavior as deceptive for the consumers.

The Complainant states that the Respondent is not an authorized dealer and has no right in the 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 used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights relating to FENDI.

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

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; a service associated with the trademark <christiesauction.com>, Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., WIPO Case No. D2001-0075; complementary qualities to those associated with the trademark <viagraconfidential.com>, Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870.

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

- <fendibags.com> is composed of the Complainant’s trademark FENDI combined with the generic term “bags”.

- The domain name includes the “.com” 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 “bags” 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 in all likelihood be confused into thinking that the domain name at issue is associated with the Complainant and its FENDI trademark. 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 France v. Cantucci Commerciak Corp., WIPO Case No. D2005-1195.

Furthermore, such confusion is likely to be increased as Complainant is the owner of well-known trademarks.

The second difference between the trademark FENDI and the domain name is the adjunction of “.com”. It is well established that such an adjunction is due to the current technical specificities of the domain name system, and should not be taken into account in evaluating the identity or similarity between the disputed domain name and the Complainant’s trademark New York Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172.

As a consequence, the Panel considers that the domain name is confusingly similar to the trademark FENDI owned by the Complainant. Therefore, the Panel considers 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 from the available evidence that there is no relationship between Respondent and Complainant and that Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademark under any circumstance.

Furthermore, several WIPO UDRP decisions have established that, once the Complainant has filed the Complaint and established a prima facie case against the Respondent, the burden is on the Respondent to prove its right and legitimate interest in the name Southcorp Limited v. Frontier Direct Pty Ltd., WIPO Case No. D2004-0949, , and Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.

As the Respondent is in default and the Complainant has established a prima facie case, the Panel is of the opinion 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 both conditions are cumulative, as stated in previous decisions under the Policy Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001. Consequently, 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.

A. Registered in bad faith

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

The Complainant’s trademarks are very well-known, including where the Respondent does business. Previous Panels have considered that Respondent’s bad faith could in certain circumstances be presumed based on the fame of the Complainant’s trademark AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088, “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”.

It is reasonable in this case to conclude that the Respondent was in all likelihood 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.

B. Used in bad faith

Respondent’s domain name apparently diverts Internet users wishing to search Complainant’s marks to Respondent’s website which propose links to other websites offering the same or similar products to those of the Complainant through the use of a domain name confusingly similar to Complainant’s marks and own domain name.

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 a website of competitors constitutes “bad faith”.

- Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 “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 (1) redirected web traffic from the Disputed Domain Name to one of Staples’ chief competitors; (2) uses a typosquatted, i.e., confusingly similar domain name; and (3) 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”;

- Edmunds.com v. Ult. Search, Inc., WIPO Case No. D2001-1319 “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”;

- NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 “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”;

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

- Oly Holigan, L.P. v. Private, Case No. FA0011000095940, N.A.F., 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”;

- Marriott International, Inc. v. Kyznetsov, Case No. FA0009000095648, N.A.F., 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”.

In this case, the Panel finds that the domain name has been registered and used in bad faith.

As a result, the Panel finds that the conditions 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 <fendibags.com> be transferred to the Complainant.

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Nathalie Dreyfus
Sole Panelist

Dated: February 25, 2007