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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Diesel S.p.A. v. DomainsByProxy Inc. and Paul Szigety

Case No. DWS2008-0007

1. The Parties

The Complainant is Diesel S.p.A., Molvena, Italy, represented by Mr. Fabrizio Sanna.

The Respondents are DomainsByProxy Inc., of Scottsdale, Arizona, United States of America, and Mr. Paul Szigety, Bronx, New York, United States of America (referred to collectively hereafter for convenience as "Respondent").

2. The Domain Name and Registrar

The disputed domain name <diesel.ws> is registered with GoDaddy.com, Inc.

3. Procedural History

The original Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 8, 2008 having as Respondent DomainsByProxy Inc. and Mr. Paul Szigety. On October 9, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 9, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response indicating that Mr. Paul Szigety is listed as the registrant and providing the contact details. 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 October 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 6, 2008.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on November 12, 2008. 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 following facts are not contested:

On November 20, 2005, DomainsBy Proxy, Inc. and/or Mr. Paul Szigety, registered the disputed domain name with the Registrar.

On May 27, 2008, DomainsBy Proxy, Inc. advised the Complainant by email that it, DomainsBy Proxy, Inc was not the actual registrant of the disputed domain name, and provided as the current registrant the name and contact details of Mr. Szigety.

5. Parties' Contentions

A. Complainant

The Complainant contends the following:

The Complainant is a leader in the fashion industry having registered its trademarks in several countries.

The Complainant owns several hundreds of trademarks including the term "diesel" registered in more than 73 countries in connection with goods falling under international classes 3, 9, 14, 16, 18, 24 and 25, and has registered its DIESEL mark inter alia in the United States of America ("U.S."), the European Union and in the major Asian and Oceania countries, all these registrations currently valid and subsisting.

Particularly, the Complainant owns an Italian registration for DIESEL, No. 604129 granted on June 11, 1993, and renewed on May 13, 2003, in classes 3, 9, 14, 16, 18 and 24; International Registration No. 608.499, granted on December 2, 1993, in classes 3, 9, 14, 16, 18 and 24, extended to Algeria, Antigua and Barbuda, Armenia, Austria, Azerbaijan, Belarus, Benelux, Bosnia-Herzegovina, Bhutan Bulgaria, China, Croatia, Czech Republic, Cuba, Egypt, France Germany, Kazakhstan, Kenya, Kirghizstan, Lesotho, Liberia, Liechtenstein, Macedonia, Moldavia, Monaco, Mongolia, Morocco, Mozambique, North Korea, Poland, Portugal, Romania, Russia, Saint-Marin, Sierra Leone, Slovakia, Slovenia, Spain, Sudan, Swaziland, Swiss, Tajikistan, Ukraine, Uzbekistan, Viet Nam, Zambia; U.S. registration Nos. 1498698 and 1564710, registered on August 2, 1988 and on November 7, 1989 respectively, in class 25; U.S. registration No. 1989390, registered on July 30, 1996, in classes 3, 9, 14, 16, 18, 24 and 25; Japanese registration No. 2273385, registered on January 31, 1997 and renewed on January 23, 2007, in class 25; Australian registration No. 901972, registered on July 27, 1999, in classes 14, 18, 25 and 43.

The Complainant operates its own domain name <diesel.com> since 1995.

The Complainant has used worldwide the mark DIESEL in connection with a wide range of fashion products, including clothing, clothing accessories, footwear, jewelry, watches, handbags and other leather goods, and women's and men's fragrances.

The Complainant has built the value of the DIESEL trademark through extensive marketing and promotional activities over a 30-year period in Europe, the U.S. and Asia.

The Complainant advertises its DIESEL products on television, radio and in numerous famous magazines. The Complainant provided evidence of significant amounts spent on advertising in Europe, in the U.S. and Latin America, and in the rest of the world.

On November 20, 2005, DomainsBy Proxy, Inc. and/or Mr. Paul Szigety, registered the disputed domain <diesel.ws>. The disputed domain name is identical to the Complainant's well known trademark DIESEL, the only difference is the addition of ccTLD suffix, ".ws".

However the ccTLD suffix ".ws" does not add an element of distinctiveness that is taken into consideration when evaluating the identity or confusingly similarity of the Complainant's trademark and the disputed domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain name <diesel.ws>.

The Complainant has not entered into any kind of agreement with DomainsByProxy, Inc. and/or Mr. Pail Szigety nor has any relationship with them that would entitle them to use the Complainant's trademark DIESEL.

There is no evidence that the Respondent holds any trademark registration for DIESEL.

The Respondent does not have a self standing business activity under any name corresponding to the disputed domain name.

DomainsByProxy, Inc. is an Internet related service company doing business under the name "DomainsByProxy".

Mr. Paul Szigety has not used or made any demonstrable preparations to use any name corresponding to the disputed domain name in connection with a bona fide offering of goods services.

Moreover, it is unlikely the Respondent was unaware of the Complainant and its trademark DIESEL before registering the disputed domain name. The Respondent is located in the U.S. where the Complainant owns several registrations for DIESEL and where it runs more than 45 official retail stores.

The registration of the disputed domain name was made in bad faith in order to exploit the goodwill of the Complainant's trademark.

By registering a domain name identical to the Complainant's trademark, the Respondent is suggesting to Internet users that the website "www.diesel.ws", to which the disputed domain name resolves, is actually run or endorsed by the Complainant.

The Respondent has in mind, when registering the disputed domain name, the Complainant's trademark DIESEL and its goodwill, as well as their extraordinary reputation.

By displaying on its website official information about the Complainant, the Respondent misleads the public into believing that the website is operated by the Complainant itself.

The Respondent is attempting to create an association with the Complainant that does not exist, and to usurp the fame of and goodwill in the DIESEL mark in violation of the Complainant's trademark rights.

The website "www.diesel.ws" contains sponsored links that redirect users to other online locations offering competing goods to the ones offered by the Complainant, which evidences that the domain name is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has proven to the Panel's satisfaction that it owns several registrations for the trademark DIESEL, particularly in the U.S. where the Respondent is apparently located.

In view of the foregoing, especially as the disputed domain name incorporates the Complainant's trademark in its entirety with no differentiation, the Panel finds that the disputed domain name is identical to the Complainant's trademark DIESEL, and therefore, the Complainant has succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the second element that the complainant must prove is that the respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate rights or legitimate interests in the domain name.

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e. that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of proof shifts to the respondent. The respondent must then, to the panel's satisfaction, demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.

The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests and so the burden of proof has effectively been shifted to the Respondent, who did not reply to the Complainant's contentions in a Response or otherwise make such a showing.

Furthermore, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services in connection with the disputed domain name.

Moreover, the Complainant has proved to the Panel's satisfaction that the disputed domain name has sponsored links that redirect Internet users to other online locations offering competing goods to the ones offered by the Complainant.

Therefore, the Panel finds that the Respondent is attracting for commercial gain, Internet users to its website and to the Complainant's competitors' websites. Such use cannot be considered a bona fide use, or fair or non-commercial use as set forth in paragraph 4(c)(iii) of the Policy.

Additionally, there is no evidence that the Respondent is commonly known as or identified by DIESEL. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.

The Policy in its paragraph 4(b) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

As above-referenced, the Panel finds that the Complainant appears to own several registration for the trademark DIESEL, particularly in the U.S. where the Respondent appears to be located.

Moreover, the Complainant has promoted the DIESEL trademark through extensive marketing and promotional activities over a 30-year period in Europe, the U.S. and Asia, having provided evidence of significant amounts spent on advertising in Europe, in the U.S. and Latin America, and in the rest of the world.

Furthermore, from printouts of the website at the disputed domain name on the record before it, the Panel notes that the Respondent presents the website "www.diesel.ws" as the "Official Diesel website", imitating the Complainant's trademark and design elements.

For the above, the Panel finds that the Respondent in all likelihood was aware of the Complainant and its trademark DIESEL, before registering the disputed domain name, which further evidences its bad faith registration.

In addition, the Complainant has proved to the Panel's satisfaction that the website to which the disputed domain name resolves has sponsored links that redirect Internet users to other online locations offering competing services to the ones rendered by the Complainant.

Therefore, the Panel finds that the Respondent used the disputed domain name intentionally to attract, for commercial gain, Internet users to its web site or other on-line locations, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement.

For these reasons, the Panel finds that the Respondent both registered and used the disputed domain name in bad faith, and that the Complainant has therefore made out the third element of its case

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 <diesel.ws> be transferred to the Complainant.

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Miguel B. O'Farrell
Sole Panelist

Dated: December 16, 2008