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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rainbow Spa v. Anton Konev
Case No. D2006-1015
1. The Parties
The Complainant is Rainbow Spa, Loreto, Italy, represented by Marcotulli Clemente Law Firm, Rome, Italy.
The Respondent is Anton Konev, Moscow, Russia.
2. The Domain Names and Registrar
The disputed domain names are <winxclubfans.com>, <winxclubfashions.com>
and <winxclublib.com>, hereinafter referred to as the “Domain Names”.
The Registrar is EstDomains Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on August 9, 2006, and in hardcopy on August 22, 2006. On August 14, 2006, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.
On August 11, 2006, a Request for Registrar Verification was transmitted to EstDomains Inc. which confirmed with its Verification Response of August 16, 2006, that the Respondent was the current registrant of the Domain Names, providing the details for the administrative, billing and technical contact. According to the information by the Registrar of August 25, 2006, the Respondent had not submitted in its Registration Agreement to the jurisdiction of the courts at the location at the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name. Therefore, the Center asked the Complainant’s representative to amend point “VIII Mutual Jurisdiction” of the Complaint. In response the Complainant’s representative filed an Amendment by e-mail on August 29, 2006, and in hardcopy on September 4, 2006, stating that in accordance with Paragraph 3(b)(xiii) of the Rules the Complainant will submit with respect to any challenges that may be made by the Respondent to a decision of the Administrative Panel to transfer or cancel the Domain Names, to the jurisdiction of the courts at the location of the domain holder’s address as shown for the registration of the Domain Names in the Registrar’s Whois database at the time the Complaint was submitted to the Center. The Center verified that the Complaint together with the Amendment 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 September 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2006.
The Center appointed Dr. Andrea Jaeger-Lenz as the Sole Panelist in this matter on October 10, 2006. The Panel found that the Complainant did not submit sufficient evidence in respect of the registration of its trademarks and in respect of its commercial activities including the design of its website and of the cartoon figures. In response to a Procedural Order, issued to the Parties on October 25, 2006, on the same day the Complainant submitted some of the requested evidence.
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,
4. Factual Background
The following facts and statements have been established on the basis of the Complaint and the documents attached to the Complaint in accordance to paragraph 3(b)(xv) of the Rules and on the basis of the relevant evidence the Complainant submitted in response to the Procedural Order of the Panel. They have not been contested by the Respondent.
The Complainant is an Italian animation studio specialized in the production of animation series for children. It produces a famous television cartoon entitled “Winx Club”, and world widely publishes a magazine based on the cartoon, entitled “Winx Club Magazine”. Under the trademark “Winx Club” the Complainant trades licences for a variety of products for children throughout the world, such as toys, clothing or school accessories.
The Complainant claims to be the owner of the following word and device trademarks:
- WINX CLUB, Italian Trademark Registration No. 902831 (classes 3, 16, 25, 28, 41);
- WINX CLUB, International Trademark Registration No. 811614 (classes 3, 16, 25, 28, 41) and Registration No. 875554 (classes 9, 14, 15, 18, 24, 30, 32);
- WINX CLUB, US Trademark Registration No. 3104548 (classes 3, 16, 25, 28, 41).
It has been established by documentary evidence that the Complainant at least owns the Italian and the International word and device trademark WINX CLUB. The figurative elements of the device trademark consist in the writing of “Winx Club” in an original typeface and in the letter “x” resembling a flower. The trademark WINX is not registered, but is used by the Complainant since 2003. Moreover the Complainant is the owner of the domain name <winxclub.com>.
The disputed Domain Name <winxclublib.com> was
registered on June 5, 2006, <winxclubfans.com> was registered on June 5, 2006,
and <winxclubfashions.com> was registered on June 9, 2006. According to
Annex 3 of the Complaint at the time the Complaint was filed each of the disputed
Domain Names directed the user to a website with sexually oriented adult cartoons,
containing visual and verbal descriptions of nude adults and of adults engaged
in sexual acts. According to the Center’s verification on August 16, August 25
and September 5, 2006, the Respondent ceased to use the Domain Names, which
still was the case at the time the decision was drafted.
5. Parties’ Contentions
The Complainant contends that for each of the disputed Domain Names the three requirements specified in paragraph 4(a) of the Policy are satisfied. In particular the Complainant claims that:
(i) The Domain Names are confusingly similar to the Complainant’s trademarks WINX CLUB and WINX.
The Complainant claims that the disputed Domain Names are almost identical and confusingly similar to the trademark WINX CLUB for which it has exclusive rights, and that in any case the Domain Names make use of its trademarks. It points out that the only difference between its trademark and the Domain Names is the addition of “lib”, “fashions” and “fans” respectively. Notably with regard to the domain name <winxclubfashion.com> and in respect of the fact that the Complainant has a relevant merchandising activity in the field of fashion ware for children, it claims that the simple addition of the word “fashions” next to “winxclub” can misleadingly divert children using the Internet to a pornographic website.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names in dispute.
The Complainant states that it has not authorized, licenced or otherwise allowed the Respondent to make use of the Domain Names and/or of the trademark WINX CLUB or WINX. It claims that the Respondent is not making any legitimate non commercial fair use of the names and, moreover, that the Respondent risks to divert children to a pornographic website which is clear evidence of use in bad faith, contrary to paragraphs 4(b) and 4(c) of the Policy.
(iii) The Domain Names were registered and are being used in bad faith.
The Complainant claims that the disputed Domain Names were registered and are used in bad faith and in a socially dangerous way. In this context it emphasizes that Winx Club is a very famous television series and that both the series and all merchandising activities related to the series are specifically dedicated to children. Furthermore it asserts that the Respondent has registered the Domain Names for the purpose of selling pornographic services and therefore intentionally attempts to attract, for commercial gain, Internet users to his, the Respondent’s, websites. Moreover it claims that by doing so the Respondent is creating a likelihood of confusion with the Complainant’s trademark, the more so as in respect of graphics and design the Respondent’s websites are totally identical to the Complainant’s website. Referring to the documentation provided as Annex 3 to the Complaint the Complainant outlines that the Respondent uses the characters of the Complainant’s cartoon and that he even reproduces the copyright notices of the Complainant.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant a remedy:
(1) 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
(2) that the Respondent has no rights or legitimate interests in respect of the Domain main Name; and
(3) that the Domain Name has been registered and is being used in bad faith.
According to paragraph 14(a) of the Rules, in case of failure of the Respondent
to provide a response to the allegations of the Complainant, the Panel is directed
to decide the administrative proceeding on the basis of the Complaint. According
to paragraph 14(b) of the Rules the Panel “shall draw such inferences
therefrom as it considers appropriate” (also stated in Ermenegildo
Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex
S.A. and Ermenegildo Zegna Espaсa S.A v. Ocxon Media S.A., WIPO
Case No. D2001-0128; Tarjeta Naranja S.A. v. MrDominio.com and Alejandro
San Jorge, WIPO Case No. D2001-0295).
A. Identical or Confusingly Similar
“Winx Club” is the distinctive part of the trademark of the Complainant
which is a registered Italian and International trademark. The first parts of
the contested Domain Names repeat the only word element of the Complainant’s
trademark WINX CLUB, only the space between “Winx” and “Club”
is missing. However this omission is insignificant in the context of domain
names (see Tia Carrere v. Steven Baxt, WIPO
Case No. D2005-1072). Hence the Panel finds that in respect of the first
parts of the Respondent’s Domain Names there is an identity with the only
word element of the Complainant’s trademark. As for the second parts of
the Domain Names, i.e. “lib”, “fashion” and “club”,
the Panel finds that merely generic terms were added. The term “lib”
in Anglo-American common language is an abbreviation for “library”.
It is well established in the jurisdiction of the WIPO that the addition of
a generic term does not service to distinguish the Domain Name from the trademark
(see Sanofi-Aventis and Aventis Pharma SA v. Advent Innovations, WIPO
Case No. D2005-0377; Viacom International Inc. v. Frank F. Jackson and
Nancy Miller, WIPO Case No. D2003-0755;
Sociйtй Air France v. RBlue, WIPO Case
No. D2005-0290). The Panel sees no reason to digress from this prevailing
opinion. The more so as the second parts “lib” and “fashion”
are generic terms associated with the business of the Complainant who produces
a magazine and trades with merchandising articles including clothes. Also in
respect of the term “fans” Internet users are likely to believe
the Respondent’s sites are related to the Complainant’s business,
associated with, or authorized by the Complainant, for example providing a fan-shop
or a forum for news on the series.
Accordingly the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant’s asserts that it has not authorized, licenced or otherwise
allowed the Respondent to make use of the domain name and/or of the trademark
WINX CLUB. It further asserts that the Respondent does not make any legitimate
noncommercial fair use of the name, moreover that the Respondent risks to divert
children to a pornographic website. It is sufficient for the Complainant to
establish prima facie evidence (see ECKES-GRANINI GmbH & Co.KG
v. Weidner AG., WIPO Case No. D2000-1116;
Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO
Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO
Case No. D2004-0110). The Complainant’s allegations remained uncontested.
The Respondent has not provided any evidence of circumstances of the type specified
in paragraph 4(c) of the Policy. Furthermore there are no other circumstances
apparent that would reflect any rights or legitimate interest of the Respondent
in the disputed Domain Names. Namely in respect of the Domain Name <winxclubfans.com>
there is no apparent legitimate interest in using the domain as a non-commercial
fan site. Moreover, as the Respondent used the Domain Names for websites with
pornographic content, the use cannot be considered as a legitimate non-commercial
or fair use of the domain name, if only because such use tarnishes the reputation
of the well-known trademark “Winx Club” (see Benetton Group SpA
v. Domain for Sale, WIPO Case No. D2001-1498).
Accordingly, the Panel finds that that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Considering whether the disputed Domain Names are used in bad faith, paragraph 4(b) of the Policy enumerates several circumstances, that if found by the Panel to be present, in particular but without limitation, shall be evidence of the registration and use of a Domain Name in bad faith. Paragraph 4(b)(iv) states that such is, if the Respondent by using the Domain Name has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location. As the list of factors provided in paragraph 4(b) of the Policy is not exhaustive, other evidence of bad faith is also to be considered.
As to the registration the Panel is convinced that the Respondent was well
aware of the Complainant’s trademark. Not only are the Domain Names of
the Complainant and the Respondent confusingly similar, but also the Respondent’s
websites made use of the characters of the Complainant’s cartoons and
contained graphics and design in the identical style of the content of the Complainant’s
website. Hence the Panel is convinced that the Respondent intended to provoke
confusion with the Complainant’s trademark as to the source, affiliation
and endorsement of its websites and to divert users to his own websites. However,
from the evidence presented by the Complainant, the Panel cannot conclude that
the Respondent’s aim was to use the website for commercial gain. Yet it
must particularly taken into account that the Respondent used the Domain Names
in order to present pornographic contents. Prior UDRP decisions have established
that someone having no rights in the trademark of someone else and using a well-known
trademark for the purpose of connecting to a pornographic website does not use
the domain name in good faith (Motorola Inc. v. NewGate Internet Inc.,
WIPO Case No. D2000-0079; Benetton
Group SpA v. Domain for Sale, WIPO Case
No. D2001-1498; Ingersoll-Rand Co. v. Frank Gully d/b/a Advocomren,
WIPO Case No. D2000-0021). Besides the
fact that the “Winx Club” series and merchandising is dedicated
to children and thus the Respondent risked in a socially dangerous way that
children are diverted to his pornographic websites, it can be established that
the resolution of the Respondent’s Domain Name into a pornographic site
is a tarnishment of the Complainant’s trademark and an evidence of bad
faith (Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,
WIPO Case No. D2001-1314; V&S Vin
& Sprit AB v. Ooar Supplies, WIPO
Case No. D2004-0962).
Accordingly the Panel finds that the Complainant has
satisfied paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Panel decides that the Domain Names at issue are confusingly similar with the Complainant’s trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Names, and that the Domain Names have been registered and are being used in bad faith.
Accordingly, the Panel orders, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, that the Domain Names <winxclubfans.com>, <winxclubfashions.com> and <winxclublib.com> be transferred to the Complainant.
Dated: November 1, 2006