The Complainant is Etro S.p.A., Milan, Italy, represented by Studio Legale Perani, Milan, Italy (the “Complainant”).
The Respondent is Domain Registrations, ChilGok, Gyeongbuk, Republic of Korea
(the “Respondent”).
2. The Domain Name and Registrar
The Disputed Domain Name <etro.net> ( the “Disputed Domain Name”)
is registered with eNom, Inc. (the “Registrar”). The Domain Name
was registered on April 20, 2003.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2006. On February 17, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 17, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent 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 March 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2006.
The Center appointed Hub Harmeling as the sole panelist
in this matter on April 7, 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
Considering the evidence submitted, the Panel finds that the following facts have been established.
The Complainant, Etro S.p.A, is a well-known company in the fashion business located in Milan that trades under the trademark ETRO in Italy and elsewhere. It manufactures and markets a variety of products, such as clothing, household furnishings and accessories for men and women, including handbags, perfumes and eyewear.
The Complainant has filed, registered and used the trademark ETRO in Italy and abroad, particularly in all the Asian countries where the ETRO products have been distributed for several years.
The Complainant has submitted a computer printout showing all its trademark registrations and applications for ETRO in at least sixty countries, including eighteen trademark registrations for ETRO in South Korea.
The only information available about the Respondent, Domain Registrations, is that it is based in ChilGok, South Korea.
The Disputed Domain Name is linked to a portal website,
“www.etro.net”, with a search engine that is linked to several websites
promoting the sales of perfumes, clothing accessories, purses, and similar items
bearing different trademarks.
5. Parties’ Contentions
A. Complainant
The Complainant relies on the above-described factual background and contends that the three elements of paragraph 4(a) of the Policy have been met.
Identical or confusingly similar
The Complainant contends that the Disputed Domain Name <etro.net> is identical to the trademark ETRO.
Rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant asserts that it has a worldwide trademark watching service on the word ETRO and no trademark registration covering the word ETRO in the name of the Respondent has ever been detected. The Complainant states that the Disputed Domain Name does not correspond to the business name of the Respondent and that, according to its knowledge, the Respondent is not commonly known as ‘ETRO’. Finally, the Complainant argues that it has never licensed or otherwise authorized the Respondent to use its ETRO name and mark.
Registered and used in bad faith
The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith.
The Complainant argues that the Disputed Domain Name is linked to a home page, which contains a sort of search engine that is linked to other websites offering for sale fashionable bags, clothes and shoes. This website is linked to other websites, which operate precisely in the same category of business as the Complainant and are in direct competition with the Complainant.
Firstly, the Complainant contends that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting Etro’s business.
Secondly, the Complainant asserts that by using the domain name in this way, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The Complainant argues that, since the Complainant operates primarily in the fashion field all around the world and owns the widely used and well-known trademark ETRO, any consumer looking for ETRO products on the web is likely to be confused by the Respondent’s use of the Internet website “www.etro.net” and may reasonably believe that the Complainant is endorsing the Respondent’s website or that the Complainant does not have a website.
For these reasons, the Complainant requests the Panel to issue a decision that the domain name <etro.net> be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
The Panel notes that the Respondent has not filed a response. However, the
Panel finds that this does not mean that the remedies requested should be automatically
awarded. The Panel will have to establish whether the Complainant’s prima
facie case meets the requirements of paragraph 4 of the Policy. (See e.g.
Creative Hairdressers, Inc. v. Dynamic Progressive Technologies, Inc., NAF
Case Number FA114772and VeriSign Inc. v. VeneSign C.A., WIPO
Case No. D2000-0303).
The Panel will have to operate on the bases of the factual circumstances contained
in the Complaint and the documents available to support those contentions. (See
Pfizer Inc. v. Sangwoo Cha, WIPO Case
No. D2003-0256).
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements:
(i) 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
(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.
These elements will be examined in turn below.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant holds valid rights in the ETRO trademarks.
Since the Disputed Domain Name is identical to a mark in which the Complainant
holds rights (putting aside the “.net” gTLD ), the Panel finds the
first element to be established. The Panel points out that it is generally accepted
that the addition of “.net” does not take away identicality or confusing
similarity. (See e.g. VAT Holding v. Vat.com , WIPO
Case No. D2000-0607; Western Bonded Products Inc. dba Flex Foam v. Webmaster,
NAF Case Number FA95286)
Therefore, the Panel finds that the Complainant has satisfied the first requirement.
B. Rights or Legitimate Interests
The Panel notes that the Complainant bears the “general burden of proof”
under paragraph 4(a)(ii) of the Policy, which burden shifts to the respondent
once the complainant makes a prima facie showing that the respondent
lacks rights or legitimate interests (see Neusiedler Aktiengesellschaft v.
Vinayak Kulkarni, WIPO Case No. D2000-1769;
see also Dow Jones & Company, Inc. and Dow Jones LP v. The Hephzibah
Intro-Net Project Limited, WIPO Case No.
D2000-0704).
Since it is difficult to prove a negative (i.e. that a respondent lacks
any rights or legitimate interests in a domain name) – especially where
the respondent, rather than the complainant, would be best placed to have specific
knowledge of such rights or interests – and since paragraph 4(c) describes
how a respondent can demonstrate rights and legitimate interests, a complainant’s
burden of proof on this element is light (see e.g. De Agostini S.p.A. v.
Marco Cialone, WIPO Case No. DTV2002-0005).
Hence, the Complainant must make at least a prima facie showing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. After the complainant has met its initial burden of proof, if respondent fails to submit a response, the complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Panel finds that the Complainant has indeed made a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name within the meaning of paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances brought forward by the Complainant.
The Complainant has never detected a trademark covering the word ETRO in the name of the Respondent.
There is no indication that the Respondent is known under the Disputed Domain Name.
The Complainant has never licensed or otherwise authorized the Respondent to use its ETRO name and mark.
Therefore, the Panel finds that the Complainant has satisfied the second requirement.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith.
One such circumstance is that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In view of the contentions of the Complainant and the substantiation thereof, by means of evidence of worldwide trademark registrations, worldwide distribution networks and a description of the actual use of the trademark, the Panel accepts that the ETRO mark is widely used and well known to the effect that the Respondent must have been aware of it. This is the more pertinent since the Respondent’s use of the Disputed Domain Name includes linking to websites offering many fashion labels of worldwide renown, which indicates that Respondent is aware of fashion brands such as ETRO. Consequently, the purpose and effect of registration and use of the Disputed Domain Name must have been to attract traffic to such websites.
The Panel considers that a consumer looking for ETRO products on the web is
likely to be confused by the Respondent’s use of the Internet website
“www.etro.net” and may reasonably believe that the Complainant is
endorsing the Respondent’s website. Thus by registering and using the
Disputed Domain Name for the purpose of attracting Internet users to a portal
website that directs traffic by means of sponsored links to websites offering
goods similar to those for which the Complainant’s ETRO trademarks are
used worldwide, the Respondent intentionally – and without authorization
– benefits from the reputation of the ETRO trademark and is likely to
confuse the public. The Respondent is therefore creating a likelihood of confusion
with the ETRO trademark, particularly as to the source, affiliation and/or endorsement
of the website.
The Panel finds that the attempt to attract traffic to the website is for commercial
gain, since Respondent’s website shows a list of other websites and advertises
them as ‘sponsored links’ for which Respondent receives remuneration
(see also Etro S.p.A. v. Domaincar, WIPO Case
No. D2006-0107).
Therefore, the Panel finds that the Complainant has satisfied the third requirement.
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 <etro.net> be transferred to the Complainant.
Hub. J. Harmeling
Sole Panelist
Dated: April 27, 2006
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