gennymoda.com

IPI Italia S.p.A. v. gennymoda.com

Case No. D2003-0866

The Complainant is IPI Italia S.p.A. of Milan, Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is gennymoda.com of New York, United States of America.

The disputed domain name <gennymoda.com> is registered with Go Daddy Software.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2003. On October 31, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On October 31, 2003, Go Daddy Software 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. 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 November 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2003.

The Center appointed Stefan Abel as the sole panelist in this matter on December 8, 2003. 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.

The Center attempted to send the Complaint via courier to the Respondent’s address as indicated in the registrar’s verification response. However, the delivery attempt failed due to an incorrect address and the Complaint was returned to the Center.

The Complainant has exhibited several registrations of the trademark "GENNY" including an Italian registration, an international registration for various European countries and a registration of the United States Patent and Trademark Office dating May 3, 1988. All of these trademark registrations refer to Genny S.p.A., Ancona, Italy, as the reported owner. The Complainant has also exhibited a list of over 100 trademarks including the word "GENNY" registered in various countries all over the world.

These trademarks are registered for sunglasses and other products of the fashion industry. The word "moda" included in the disputed domain name is the Italian term for "fashion."

The Complainant has submitted a deed executed by an Italian notary on January 13, 2003, stating that the business of Genny S.p.A., Ancona, Italy, which includes the "GENNY" trademark, its use, management and marketing, is transferred to the Complainant.

The Respondent has registered the disputed domain in February 2003. The "name" of the Respondent as indicated in the registrar’s WHOIS registry is identical to the registered domain name. There are no further indications as to which US-located company or which US-located individual the domain name is registered for.

The disputed domain name is redirected to the domain name <lesboerotica.com> containing English-speaking pornographic pages. Full access to these pages is offered for a fee.

The Complainant contends that one of its most significant markets for products marketed under the trademark "GENNY" are the North-American countries, and that the Respondent must have been aware of the Complainant’s trademark when registering the domain.

The Complainant contends that the domain name at issue is confusingly similar to the trademark "GENNY" and that both the use of a pornographic site and the Respondent’s provision of false contact details in the domain name registration establish a lack of rights or legitimate interests in respect of the domain name and the bad faith element. In support of these contentions, the Complainant relies on various decisions under the Policy.

The Complainant requests that the domain name be transferred to it.

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

The Policy provides for a transfer of a domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

and

- the Respondent has no rights or legitimate interests in respect of the domain name;

and

- the domain name has been registered and is being used in bad faith.

Paragraph 4(c) of the Policy sets out the circumstances which, in particular, but without limitation, shall demonstrate the Respondent’s rights or legitimate interests in respect of the domain name.

Paragraph 4(b) of the Policy sets out the circumstances which, in particular, but without limitation, shall be evidence of registration and use of the domain name in bad faith.

As a result, the Panel is satisfied that all requirements of paragraph 4(a) of the Policy are met for the following reasons and considerations:

The domain name at issue is confusingly similar to the trademark "GENNY." The only difference between the disputed domain name and the trademark "GENNY" lies in the combination of the trademark with the word "moda" represented by the domain name. This does not constitute a distinctive element at all.

The word "moda" added to Complainant’s trademark in Respondent’s domain name is a generic term that, generally speaking, rarely excludes confusing similarity. "Moda" is the Italian noun for "fashion." Since the Complainant’s trademark designates fashion products and since the former and the present owner of the trademark are located in Italy, the word "moda" does not only lack any distinctive character with regard to the Complainant’s trademark, bur reinforces and confirms the first impression created by the first part of the domain name "GENNY" that the disputed domain name refers to Complainant’s trademark.

Respondent’s domain name resolves to a pornographic website to be entered upon payment.

There is no logical relationship or any other obvious connection between Complainant’s trademark in combination with the word "moda" and a pornographic website. In particular, it does not make much sense to use an Italian noun for an English-speaking website. Accordingly, the Respondent does not use the disputed domain name as an "official" domain name of its website, but only as an address which is redirected to its "official" domain <lesboerotica.com>.

In the light of this and taking into consideration that the Complainant’s trademarks "GENNY" have been registered in various countries all over the world for many years, including the United States of America, where the trademark "GENNY" has been registered for nearly 20 years now, the Panel must assume that the Respondent merely seeks to divert users looking for a website containing information on "GENNY" products to the Respondent’s pornographic website. Other purposes are not apparent.

As such use of a trademark for a pornographic site obviously tarnishes the trademark owner’s mark, the Panel finds, along with the considerations in Microsoft Corporation v. Phayze Inc.,WIPO Case No. D2003-0750 (<hackingxbox.com>), that such use of the disputed domain cannot be covered by any rights or legitimate interests. Consequently, the Panel holds that the requirements of paragraph 4(a)(ii) of the Policy are clearly established.

It has been stated above (B) that a legitimate use of the disputed domain for a pornographic website is hardly conceivable and appears to serve only for the purposes of intentionally misleading and diverting customers looking for information on "GENNY" fashion products to Respondent’s site. Thus, the Panel finds that bad faith registration and present bad faith use as required by paragraph 4(a)(iii) of the Policy are clearly established (see also Benetton Group S.p.A. v. Domain for Sale, WIPO Case No. D2001-1498 - <benettonsportsystem.com>; Microsoft Corporation v. Phayze Inc.,WIPO Case No. D2003-0750 - <hackingxbox.com>.

This finding is additionally confirmed by the fact that the Respondent has only provided contact details which are not sufficient for identifying the legal entity behind the Respondent and to sue it before the national courts (see Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 - <wochovia.com>).

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 be transferred to the Complainant.