frankiemorello.net

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G.M. Studio Design & Fashion S.N.C. v. Lee, Hyun Woong

Case No. D2007-1770

1. The Parties

The Complainant is G.M. Studio Design & Fashion S.N.C., Milan, Italy, represented by Studio Legale Perani, Italy.

The Respondent is Lee, Hyun Woong, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <frankiemorello.net> is registered with Tucows, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2007. On December 4, 2007, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On December 5, 2007, Tucows, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The registrar confirmed the language of the registration agreement as English. 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”). An email from the Respondent was received by the Center on December 7, 2007 requesting to proceed in Korean.

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 December 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2008. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on January 7, 2008.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on January 17, 2008. 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, G.M. Studio Design & Fashion S.N.C., created clothing brand “Frankie Morello”, which is sold in boutiques and marketed in fashion magazines. The trademark FRANKIE MORELLO has been filed, registered and used in Italy and abroad by the Complainant. In particular, the Complainant refers to the following certificates and/or registrations:

- Italian trademark registration n. 889914, FRANKIE MORELLO, filed on November 12, 1999 and granted on April 23, 2003, in classes 3, 18 and 25.

- Community trademark registration n. 1642073 FRANKIE MORELLO, filed on May 5, 2000 and granted on October 30, 2002, in classes 3, 18 and 25.

- International trademark registration n. 827540, FRANKIE MORELLO, granted on May 10, 2004, in classes 3, 18 and 25.

The Complainant also owns the domain names <frankiemorello.it> and <frankiemorello.com>. Further, the Complainant offers a range of fashion items and appears to be known on a worldwide basis.

The disputed domain name <frankiemorello.net> was created on July 11, 2007. In addition, the Panel has visited the website of the disputed domain name and found that the main page says “Coming Soon”, i.e. under construction.

5. Parties’ Contentions

A. Complainant

- The Complainant contends that the disputed domain name is identical to the trademark FRANKIE MORELLO and that the Respondent has no rights in the domain name, since the latter does not correspond to a trademark registered in the name of Lee, Hyun Woong, nor to the name of the Respondent and to the best knowledge of the Complainant, Lee, Hyun Woong is not commonly known as “Frankie Morello”.

- Further, the Complainant contends that the disputed domain name is not being used for any bona fide offering as the website to which the disputed domain name is connected offers several fashion and luxury items (such as apparel, purses and perfumes), with some being from the Complainant’s direct competitors. In addition, the Complainant contends that the disputed domain name is not being used on any fair non-commercial basis.

- The Complainant further contends that the disputed domain name was registered and is being used in bad faith, as there are present circumstances indicating that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website. In particular, the use of the disputed domain name by the Respondent is likely to confuse Internet users, causing them to believe, erroneously, that “www.fashionshock.com” – which directs to the disputed domain name is connected – is a website through which they can purchase products manufactured, sold or sponsored by the Complainant.

- In addition, the Complainant contends that the presence of links to the websites of the Complainant’s competitors renders the Respondent’s conduct even worse, and that the sole further possibility might be that the Respondent registered the disputed domain name in order to resell the same to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceeding

Noting the language of the registration agreement has been confirmed by the registrar as English, the Panel finds English to be the appropriate language of proceedings.

B. Identical or Confusingly Similar

The Complainant has submitted evidence of registrations of its trademark FRANKIE MORELLO, and the international business connected with this trademark. In light of the presented evidence, the Panel is convinced that FRANKIE MORELLO is a registered trademark of the Complainant.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s said registered trademark, as the disputed domain name <frankiemorello.net> fully incorporates the trademark FRANKIE MORELLO without any alteration thereto and, as mentioned above, the Complainant’s ownership of the latter trademark is not disputed.

In conclusion, the Panel finds that the Complainant has satisfied the requirement of Paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy outlines circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interest in the domain name. The Panel finds that none of the circumstances mentioned in the said Paragraph 4(c) had been met or made, particularly in light of the Respondent’s lack of response.

Therefore, the Panel considers that the Complainant has made a prima facie case of lack of rights or legitimate interests on part of the Respondent (see Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437).

Moreover, due to the fact that the disputed domain name incorporates the Complainant’s registered trademark, it would be difficult to infer that, had the Respondent submitted a response, he could have established any of the circumstances set out in Paragraph 4(c) as evidencing rights or legitimate interests in the disputed domain name.

Further and in connection with this issue in particular, one should note that it has been established by previous WIPO UDRP decisions that, “while the overall burden of proof rests with the complainant, the burden of proof shifts to the respondent where the complainant establishes a prima facie case showing lack of rights and legitimate interests of the respondent to the disputed domain name”(See Caixa D´Estalvis I Pensions de Barcelona v. Young N., WIPO Case No. D2006-0406; and Croatia Airlines dd v. Modern Empires Internet Ltd., WIPO Case No. D2003-0455).

In fact, since the main page of the disputed domain name shows the sentence “Coming Soon”, it seems that the Respondent is not currently making any significant use of the same. Nor, in failing to submit a Response, has the Respondent provided any persuasive evidence of demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.

Accordingly, the Panel finds that the Respondent under this case lacks rights or legitimate interests in the disputed domain name and that the Complaint satisfies the requirement of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

For the purposes of the Policy, bad faith may be determined by evaluating four factors, which are mentioned in the policy on a non-exhaustive basis, the Policy, Paragraph 4(b):

(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location.

After visiting the website at disputed domain name and in light of the Complainant’s statements and evidence presented before the Panel, it can be inferred that the disputed domain name was registered and is being used in bad faith as alleged by the Complainant.

In deciding whether the element of bad faith exists, the Panel, among others, has taken into consideration the following elements:

1. The Respondent is using the Complainant’s trademark without license or authorization;

2. The Respondent is apparently not putting the disputed domain name to any significant use as described above.

3. The Complainant contends that the disputed domain name is linked through a redirect to the website “www.fashionshock.com”. However, the Panel cannot verify that as a fact. The Panel has, however, conducted a search of the WHOIS records and found that the administrative contact for <fashionshock.com> is Lee, Hyun Woong. The Panel does not discount the possibility that the Respondent may well have had a hand in registering both <fashionshock.com> and the disputed domain name. The Panel has further noted that the website “www.fashionshock.com” refers expressly to the Complainant’s trademark (along with other apparent competitors) and promotes the brands of the Complainant as its own. The Panel does not exclude the possibility of a relationship in the operation and inter-linking of both sites.

4. The Panel further notes the distinctiveness of the Complainant’s trademark, which was registered several years prior to the registration of the disputed domain name by the Respondent. The fact that the domain name is apparently not currently in active use does not of itself prevent a finding of bad faith in appropriate circumstances. Furthermore, the possibility of the Respondent being able to make use of the domain name in a manner which would not infringe the Complainant’s rights would appear to be minimal.

In light of the above, it seems that, on a balance of probabilities, the Respondent had registered the disputed domain name with an intention to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark.

Accordingly, the Panel finds that the Complaint satisfies the requirement of Paragraph 4(a)(iii) of the Policy.

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 <frankiemorello.net> be transferred to the Complainant.

Nasser A. Khasawneh
Sole Panelist

Dated: January 31, 2008