elenamiro.org

Miroglio S.p.A. v. Stanley Filoramo

Caso No. D2003-0887

The Complainant is Miroglio S.p.A. from Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Stanley Filoramo from Canada.

The disputed domain name <elenamiro.org> is registered with Wild West Domains, Inc.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 6, 2003. On November 6, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On November 6, 2003, Wild West Domains, Inc. 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 proceeding commenced on November 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2003.

The Center appointed Mr. Albert Agustinoy Guilayn as the sole panelist in this matter on December 12, 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 Complainant is an Italian company active in the field of fashion, having focused most of its development in the area of women’s fashion. Currently, the Complainant designs, produces and distributes world-wide all kind of women’s clothing and complements, having linked said activities to its "ELENA MIRO" trademarks.

Indeed, the Complainant has used, registered or applied to register the trademarks "ELENA MIRO" for a wide variety of goods in many countries around the world. Certainly, at present the Complainant owns or has requested the "ELENA MIRO" trademarks in a great number of countries including, inter alia, Italy, Australia, United States of America, Brazil, China, France, Denmark, United Kingdom, Israel, Germany, Mexico, Peru, Saudi Arabia, South Korea, Singapore, Switzerland or Vietnam.

For instance, the Complainant’s trademark portfolio includes the following registered trademarks:

- Italian Trademark No. 801915 registered on May 10, 1986, for the mark "ELENA MIRO" for various goods in Class 16.

- Canadian Trademark No. 629744 registered on March 27, 1992, for the mark "ELENA MIRO" for various goods in Class 25.

- International Trademark No. 488509 registered on October 9, 1984, for the mark "ELENA MIRO" for various goods in Class 24 and 25.

The Complainant is also present in the Internet by means of its corporate web site, located at <elenemiro.com>. Said web site offers information on the company as well as on its products and activities.

<elenamiro.org> was registered by the Respondent on August 29, 2003. The disputed domain name was linked to a web site containing highly offensive pornographic materials which could be purchased online. Nevertheless, said site was disconnected during the development of this proceeding.

The Panel has not obtained clear information on the Respondent, as he has not filed a response to the Complaint. Nonetheless, the Panel considers that the following issues must be pointed out at this regard:

- The Complainant has provided evidences showing that the Respondent is the registrant of other domain names corresponding to Italian designers, fashion trademarks and notorious restaurants. At this regard, the Panel has been able to verify that the Respondent has registered and owns the following domain names: <diegodellavalle.info>, <nigacalze.net> and <anticocaffegreco.info>. All those domain names were linked to pornographic web sites similar to the one on which the disputed domain name resolved until this proceeding was filed.

- In addition, the Complainant has provided evidences showing that the Respondent has been previously involved in three proceedings under the Policy. Indeed, the Respondent was involved in Giuseppe Citterio Salumificio S.p.A. v. Stanley Filoramo, WIPO Case No. D2003-0787 (being the disputed related to the domain name <salumicitterio.com>) and Jil Sander AG v. Stanley Filoramo, WIPO Case No. D2003-0816 (being the disputed domain name <jilsander.org>) and Lanificio F.lli Cerruti S.p.A. v. Stanley Filoramo, WIPO Case No. D2003-0740 (being the disputed domain name <lanificiofratellicerruti.com>). In all those cases, the appointed Panels ordered the transfer of the disputed domain names from Mr. Filoramo to the corresponding complainants.

The Complainant contends that:

- The disputed domain name is identical to the "ELENA MIRO" trademarks on which the Complainant has rights; and

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

- The Respondent registered and uses the disputed domain name in bad faith; and

- As a consequence of the above-mentioned findings, the disputed domain name <elenamiro.org> should be transferred to the Complainant.

The Respondent did not file any response to the Complaint and did not reply anyhow to the Complainant’s contentions.

In accordance to paragraph 4(a) of the Policy, the Complainant must prove the Panel the concurrence of three circumstances in order to obtain the transfer of the disputed domain names.

Said circumstances are the following ones:

(i) To prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) To prove that the Respondent does not hold rights or legitimate interests in respect of the disputed domain names;

(iii) To prove that the disputed domain names have been registered and are being used by the Respondent in bad faith.

The first element required by the Policy is that the disputed domain name and the "ELENA MIRO" trademarks are identical or confusingly similar.

In the present case, the only difference between them is the absence of a space between the two words contained in the disputed domain name as well as the inclusion of the ".ORG" suffix.

Nevertheless, said differences are derived from the current technical structure of the domain names and, consequently, they should not be considered as a difference between the disputed domain name and the Complainant’s trademarks. Many decisions adopted under the Policy have adopted such an approach (see, for example, New York Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, WIPO Case No. D2003-0172).

Therefore, the Panel considers that the disputed domain name is identical to the Complainant’s "ELENA MIRO" trademarks and, consequently, that the Complainant has met the first requirement foreseen by the Policy.

Paragraph 4(a)(ii) of the Policy requires that the Respondent does not hold rights or legitimate interests on the disputed domain names. At this regard, paragraph 4(c) of the Policy foresees a set of circumstances where the Respondent may be considered as holding said rights or interests. Those circumstances are:

- To have used the disputed domain name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods and services; or

- To have been commonly known by the disputed domain name, even when no trademark or service mark right has been acquired; or

- To make a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the present case, none of the above-mentioned circumstances applies. Actually, in appearance, neither the Respondent has been commonly known by the name "Elena Miro" nor it is developing a "legitimate non-commercial" activity by means of the disputed domain name.

Thus, it is quite unlikely that a "coincidence" has been given in the present case. On the contrary, it seems that the Respondent was clearly aware of the existence of the Complainant’s trademarks and did not register the disputed domain name for other purposes than to include the Complainant’s trademark in said domain name in order to attract Internet users to his pornographic web site.

As stated above, the Panel considers implausible that the Respondent holds legitimate rights or aims at developing fair activities by means of the disputed domain name when he has used it for distributing highly offensive pornographic contents and materials, even if the corresponding web site has been disconnected once the complaint was filed.

In addition, the Respondent has not filed any response to the complaint in this proceeding, an attitude that seems to prove his absence of rights or legitimate interests on the disputed domain names or at least his lack of interest in demonstrating the contrary.

In relationship with this circumstance, many decisions adopted under the Policy (see, for example Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 or Adventis Pharmaceuticals Products, Inc. v. Nejat, WIPO Case No. D2003-0401), have stated that by defaulting and failing to respond, the Respondent fails to offer the Panel evidences of any of the circumstances foreseen by paragraph 4(c) of the Policy or any other aimed at providing the Panel evidences of his rights or legitimate interests on the disputed domain names.

In consequence, the Panel considers that the Respondent does not hold rights or legitimate interests on the disputed domain names and that the second condition set out by the Policy has been met by the Complainant.

The last of the elements foreseen by paragraph 4(a) of the Policy is that the Complainant proves that the Respondent has registered and uses the disputed domain name in bad faith.

In regards of this issue, it is important to remind that both conditions are cumulative, as stated in many decisions adopted under the Policy (World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 or Robert Given Bogen,WIPO Case No. D2000-0001, for example).

As it has been previously stated, the Respondent is neither linked nor associated at all with the Complainant’s "ELENA MIRO" trademarks. At this regard, it is important to remind the fact that the Complainant has provided evidences showing that the Respondent owned or still owns several domain names corresponding to Italian trademarks. Hence, the Respondent has behaved in accordance to a "pattern of conduct" which may prove as registration and use in bad faith in accordance with paragraph 4 (b)(ii) of the Policy (See, for example, NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128, Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121 or Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602).

The likely explanation for the registration of the disputed domain name by the Respondent is that he was aiming at benefiting from the Complainant’s trademarks in order to attract Internet users to his web site. Since the Respondent has not filed any response denying said facts, it seems clear that the Respondent registered and used the disputed domain name in bad faith.

Furthermore, since the disputed domain name was registered and until the Panel had already been appointed for deciding in this proceeding, it has been linked to a web site containing pornographic materials that were accessible on a pre-payment basis. A great number of decisions adopted under the Policy confirm that such a behavior constitutes a clear use in bad faith as foreseen by the Policy. In this sense, in Microsoft Corporation v. Party Night, Inc. d/b/a Peter Carrington,WIPO Case No. D2003-0501, for example, the Panel stated: "the use of the domain name seemingly for the sole purpose of diverting users to the website […] with pornographic content, not only may prevent the Complainant from using the trademark in a corresponding domain name but may also tarnish the Complainant’s […] mark" (In the same sense see, inter alia, MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205, Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860 or Bayersiche Motoren Werke AG v. Rave Club Berlin, WIPO Case No. D2003-0385).

The fact that the above-mentioned web site has been disconnected during the development of this proceeding has no relevance, as such an analysis must be made in the timeframe set between the moment where the domain name was registered and the moment where the complaint is filed. Any further use or amendment should not be taken into account.

Taking into account the above-mentioned arguments, the Panel concludes that the disputed domain name was registered and has been used in bad faith

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 <elenamiro.org> be transferred to the Complainant.