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and Mediation Center
Etro S.p.A. v. Domaincar
Case No. D2006-0107
1. The Parties
The Complainant is Etro S.p.A., Milan, Italy, represented by Studio Legale Perani, Italy.
The Respondent is Domaincar, Panama, Panama.
2. The Domain Names and Registrars
The disputed domain name <etrobill.com> is registered with BelgiumDomains, LLC.
The disputed domain name <etroclothing.com> is registered with DSTR Acquisition Vii, LLC d/b/a Dotregistrar.com.
The disputed domain name <etroland.com> is registered with Capitoldomains,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2006. On January 25, 2006, the Center transmitted by email to BelgiumDomains, LLC; DSTR Acquisition VII, LLC d/b/a Dotregistrar.com Capitoldomains, LLC a request for registrar verification in connection with the domain names at issue. On different dates the commencing from January 31, 2006, BelgiumDomains, LLC, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com and Capitoldomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 20, 2006.
On February 23, 2006, 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 February 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2006. The Respondent was informed that if his response was not received by that date, he would be considered in default. The Center would still appoint a Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2006.
The Center appointed Dr. Vinod K. Agarwal as the sole
panelist in this matter on March 28, 2006. 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
From the Complaint and the various annexure to it, the Panel has found the following facts:
The Complainant Etro is in fashion business in Milan,
Italy and manufactures and markets variety of products such as house furnishing,
accessories for men and women including handbags, perfumes eyewear, etc. In
the initial stage of its business, it was producing fabrics made of fine original
fibres, decorated with elegant designs and dyed in chic colours. Thereafter,
it also started dealing in leather products, in particular in paisley jacquard
fabrics treated with a special plasticization technique. The Complainant has
the registered trademark ETRO and conducts its business under the said trademark.
The website of the Complainant is “www.etro.com”. The Complainant
also owns a number of boutiques in the name of “Etro” in various
countries and cities, such as France, Germany, Japan, Italy, Russian Federation
and United States of America.
The Complainant has submitted a computer print out showing all its trademarks registrations and applications for Etro. Among these trademarks, the following are the most relevant considering that the Respondent is located in Panama:
- Panama trademark registration No. 54960 ETRO AND DEVICE applied on October 30, 1990, and granted on December 6, 1991, and renewed until June 12, 2011, in connection with the products of class 18. (leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides, trunks and traveling bags; umbrellas, etc.)
- Panama trademark registration No. 54961 ETRO AND DEVICE applied on October 30, 1990, and granted on July 31, 1992, and renewed until July 31, 2012, in connection with the products of class 25. (clothing, footwear, headgear)
- Panama trademark registration No. 94298 ETRO AND DEVICE applied on June 8, 1998, and granted on February 7, 2000, and valid until June 8, 2008, in connection with the products of class 9. (scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking, life-saving and teaching apparatus, etc.)
Respondent’s Identity and Activities
The Respondent did not reply to the Complainant’s
contentions. Hence, the Respondent’s activities are not known.
5. Parties Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to element (i), the Complainant contends that amongst the consumers worldwide it is known as Etro. The disputed domain names <etrobill.com>, <etroclothing.com> and <etroland.com> are a combination of the term “etro” and “bill”, “clothing” and “land”. The addition of these words will not make the domain names different from the trademark of the Complainant.
As regards “land”, the Complainant has contended that in the case
of Nokia Corporation v. Marlon Sorken, WIPO
Case No. D2002-0276, where the disputed domain name was “nokialand.com”)
the Panel observed that “it is clear that the domain name is not identical
to the trademark. However it must be considered confusingly similar to the trademark
owned by the Complainant. The domain name incorporates the trade mark NOKIA
which is a well-known mark, and to add the word ‘land’ which is
a common word, does not change the overall expression of a mark”.
As regards “bill”, the contention of the Complainant is that it is a very common word and has no distinctive power. This word has been put in the domain name after the word “etro”. The consumers pay more attention to the beginning part of a domain name than to the ending part. The first portion has more relevance than the second one. The first portion is the trademark of the Complainant.
As regards the third expression, namely “clothing”, the contention of the Complainant is that it is a very descriptive word and has no distinctive power. The Complainant has stated that in six UDRP decisions, Panels have always considered this term as descriptive, incapable of diminishing the likelihood of confusion between the trademark and the concerned domain name. Thus, the domain names <etrobill.com>, <etroclothing.com> and <etroland.com> are very much identical or confusingly similar to the name of the Complainant, that is, Etro.
In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the mark ETRO. Further, the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services. The Respondent registered the domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant.
Regarding the element at (iii), the Complainant contends that the main object of registering the domain names <etrobill.com>, <etroclothing.com> and <etroland.com> by the Respondent is to earn profit and to mislead the general public and the customers of the Complainant. The Complainant has stated that the use of a domain name that appropriates a well known trademark to promote competing or infringing products cannot be considered a “bona fide offering of goods and services”.
The Complainant has relied on a number of UDRP decisions in support of its aforesaid contentions.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panel[ist] shall 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”.
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;
(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 present dispute pertains to the domain names <etrobill.com>, <etroclothing.com> and <etroland.com>. The name of the Complainant is Etro. The Complainant has many boutiques in many countries which use the word etro. The trademark ETRO has been filed, registered and widely used in many countries including Panama.
The Complainant’s trademark ETRO: is registered in the following countries,
namely, Argentina, Australia, Bahrain, Barbados, Brazil, Canada, China, Cyprus,
Democratic People’s Republic of Korea , Denmark, European Union, Finland,
Gibraltar, Greece, Hong Kong SAR of China, India, Indonesia, Iran (Islamic Republic
of), Israel, Italy, Japan, Kuwait, Malaysia, New Zealand, Nigeria, Pakistan,
Panama, Poland, Sweden and United States. The name, etro as used in the domain
names <etrobill.com>, <etroclothing.com> and <etroland.com>
is almost identical and confusingly similar.
Thus, the Panel finds that the domain names are confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain names by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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 the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is 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 Respondent has not filed any response in this
case. There is no evidence to suggest that the Respondent has become known by
the disputed domain name anywhere in the world. Based on the default and the
evidence in the Complaint, it is presumed that the above circumstances do not
exist in this case and that the Respondent has no rights or legitimate interests
in the disputed domain name. See also Pavillion Agency, Inc., Cliff
Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd. And Glenn Greenhouse,
WIPO Case No. D2000-1221. ETRO is the
name and mark of the Complainant. It is evident that the Respondent can have
no legitimate interest in the domain names. Further, in view of the fact that
the Complainant has not licensed or otherwise permitted the Respondent to use
its name or trademark or to apply for or use the domain name incorporating said
name and that nobody would use the word etro unless seeking to create an impression
of an association with the Complainant. The Panel finds that the Respondent
has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or 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 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 it 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 its 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 the Respondent’s website or location or of a product or service on its website or location.
The contention of the Complainant is that the present case is covered by the above circumstances. There are circumstances indicating that (i) the domain names have been registered for the purpose of disrupting the business of a competitor and (ii) by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its web sites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites. Further, the domain names are linked to home pages which are a sort of search engine that is linked to other web sites offering similar goods. In other words, the home pages of the Respondent’s web sites show a list of other web sites and advertise them as “sponsored links”. In fact, the web sites are linked to other web sites which operate in the same field as of the Complainant. Therefore, the inescapable conclusion is that the products of competitors to the Complainant are advertised and sold on these web sites.
This and other information submitted by the Complainant
leads to the presumption that the domain name in dispute was registered and
used by the Respondent in bad faith. The Panel agrees with the said contention
of the Complainant and concludes that the registration of the domain name amounts
to the registration and use of the domain name in bad faith.
In light of the forgoing findings, namely, that the domain name is confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names, and that the domain names were registered in bad faith and are being used in bad faith, in accordance with Paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the domain names <etrobill.com>, <etroclothing.com> and <etroland.com> be transferred to the Complainant.
Vinod K. Agarwal
Dated: April 12, 2006