The Complainant is Fendi Adele S.r.l. of Rome, Italy, represented by de Simone & Partners S.p.A., Italy.
The Respondent is Webmaster Ops. LLC of Plano, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <fendiwatches.com> is registered with Fabulous.com Pty Ltd d/b/a Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2007. On October 24, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On October 24, 2007, Fabulous.com 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 October 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 20, 2007.
The Center appointed Maninder Singh as the sole panelist in this matter on November 30, 2007. 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
The Complainant in this administrative proceeding is Fendi Adele S.r.l. The Complainant has claimed rights in relation to the domain name <fendiwatches.com>. The Complainant uses the trademark FENDI for watches. The Complainant is also the owner of more than 1,000 registrations for FENDI and similar marks in more than 100 countries since the 1970s including Australia. The dispute in the present Complaint relates to registration of the domain name <fendiwatches.com> registered by the Respondent. The Complainant has thus prayed for transfer of domain name <fendiwatches.com> from the Respondent.
5. Parties Contentions
A. Complainant's Contentions:
The Complainant claims to own more than 1,000 registrations for FENDI and similar marks in more than 100 countries since the 1970s. Some of its international registrations used for watches are:
- International Registration No. 492942 FENDI of 18.03.1985 (Complaint Exhibit III).
- US Registration No. 1,569,570 for FENDI registered 16.12.1988 (Complaint Exhibit IIIA).
The Complainant is an internationally renowned Italian Fashion and Design House. Its status as a leading fashion house has also been recognized by the decisions of previous WIPO UDRP panels, see, e.g., Fendi Adele S.r.l. v. SpeedyWeb,WIPO Case No. D2006-1602; Fendi Adele S.r.l. v. Carl Lim,WIPOCase No. D2006-1589; Fendi Adele Srl v. Mitchell Kass Designs,WIPO Case No. D2000-1743; Fendi Adele S.r.l. v. Mark O'Flynn,WIPO Case No. D2000-1226.
The Complainant has been using its FENDI mark in connection with Swiss made watches since the 1980s.
A consumer seeking FENDI watches may merely type in any internet search engine “FENDI watches”; such a search will yield a large number of website addresses. Nevertheless, most consumers do not necessarily rely on search engines when they already know what they want, but rather type directly the name of the website desired in the address bar assuming they will be directed straight to the desired website. Since the Complainant is well-known also for its distinguished watches, and “.com” is the classic business top level domain, according to the Complainant, it stands to reason that persons typing “www.fendiwatches.com” seek precisely the Complainant's goods – but are misled to the Respondent's website. Hence, there is a likelihood of consumers at the Respondent's website being confused as to the source of sponsorship of the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant has emphasised that the Respondent has no authorization whatsoever from the Complainant to use and register “fendiwatches”.
The Respondent is not commonly known under said name. In fact, it is the Complainant who is the only acknowledged subject doing business under the FENDI brand and trade name world-wide for a variety of goods (since 1925), including watches.
Consequently, there can be no rights or legitimate interests on the same sign for the same goods on part of the Respondent.
The domain name was registered and is being used in bad faith
As outlined above, according to the Complainant, FENDI is a well-known mark for watches, and has been so for over two decades. The Respondent offers via links at the disputed domain name, various FENDI goods on its website (Complaint Annex VI). Offering these goods, the Respondent must have been aware of the original brand.
Besides being famous, FENDI is a term which has no significance for watches aside from the Complainant's use: it can therefore not have been chosen by the Respondent by chance. Thus, the Complainant submits in that October 2006, the Respondent's registration of the domain name <fendiwatches.com> was in clear violation of the Complainant's rights.
b) On Use
According to the Complainant, the website at the disputed domain name is currently used to offer (without authorization) diverse goods of the Complainant and some of its competitors through various links (Complaint Annex VI). Thus, the Complainant argues that consumers are attracted to this site by using the Complainant's famous trademark.
The Complainant has also contended that this situation corresponds to UDRP established case law that using a domain name for commercial gain by exploiting famous trademarks amounts to illicit use.
B. Respondent's Contentions:
The Respondent has not furnished any response to the Complaint. However, on the basis of the record made available by the Complainant and verified by the Center and the registrar, it appears that the Respondent is the registrant of the domain name <fendiwatches.com>. The domain name appears linked to a search engine “www.fabulous.com”. (A printout of the appearance of the disputed website “www.fendiwatches.com” and the linked website “www.fabulous.com” is attached as Exhibit A-I to the Complaint).
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trade mark in which the Complainant has rights; and
(2) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) That the domain name has been registered and used in bad faith.
A. Identical or confusingly similar
The Panel finds that the Complainant has established that it is the owner of the trademark FENDI for several different products. The validity of its trademarks is beyond dispute. The Respondent's domain name is <fendiwatches.com>. The combination enhances the likelihood of confusion with the trademark FENDI. The Panel accepts the contention of the Complainant that the disputed domain name <fendiwatches.com> is identical and/or confusingly similar to the Complainant's FENDI trademark.
B. Respondent's Absence of Rights or Legitimate Interests in the Domain Name
There is no evidence that the Respondent has any right or legitimate interest in respect of the domain name including the widely-known trademark FENDI, or any association between the trademark FENDI and watches. The record before the Panel suggests that the Respondent does not own a trademark or service mark which is identical, similar or in any way related to the disputed domain name <fendiwatches.com>. It is also clear that <fendiwatches.com> is not the Respondent's personal name nor is it known in the public by that name. The Panel also finds that the Complainant has neither licensed nor otherwise permitted the Respondent to use any of its trademarks or any variation thereof or to apply for or use any domain name incorporating any of those marks or any variations thereof. The current use of the domain name to direct Internet users to commercial links offering competing products to the Complainant's products cannot be considered bona fide use of the domain name.
As such the Respondent has no rights or legitimate interests in relation to domain name <fendiwatches.com>.
C. Registration and Use in Bad Faith
Registration
The very choice of an association of the Complainant's FENDI mark and the word “watches” indicates that the Respondent, when registering the domain name, was perfectly aware that FENDI was a trademark associated with the sale of Complainant's products including watches. There is substance in the contention of the Complainant that FENDI is a household name, known also to those not particularly interested in fashion. The Complainant has also referred to the decisions in its favour in the following cases: Fendi Adele S.r.l. v. Mark O'Flynn, supra; Fendi Adele Srl v. Mitchell Kass Designs, supra; Fendi Adele S.r.l. v. Carl Lim, supra; Fendi Adele S.r.l. v. SpeedyWeb, supra.
The Panel concludes that the domain name has been registered in bad faith.
Use
The Complainant states that the domain name is being used in bad faith. The only Web presence of Respondent under the domain name as documented is its home page (Complaint ANNEXURE-VI). The Complainant has also placed on record a copy of link from “www.fendiwatches.com” (Complaint ANNEXURE VI-A).
In light of the popularity, various trademark registrations of the Complainant in several countries including Italy and recognition of the Complainant as a leading fashion house using the trademark FENDI, the Panel finds merit in the contention of the Complainant that the Respondent had registered the domain name <fendiwatches.com> being fully aware of the Complainant's considerable reputation and the fact that they are the proprietors of the widely known mark FENDI. The Complainant has also rightly contended that the same was done in order to get illegitimate gains using the trademark of the Complainant.
The Complainant has neither licensed nor otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks. There is every possibility that the consumers world wide and also in Italy would relate the disputed domain name <fendiwatches.com> with the Complainant's trademark FENDI on account of confusing similarity between the Complainant's trademark and the disputed domain name.
The Panel, therefore, in the facts of the present case, holds that the disputed domain name <fendiwatches.com> is also being used in bad faith.
7. Decision
Based on the foregoing, the Panel directs that the domain name <fendiwatches.com> be transferred to the Complainant.
Maninder Singh Sole Panelist
Dated: December 14, 2007
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