WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dolce & Gabbana s.r.l. v. Anna Bieniaszewska

Case No. D2012-2304

1. The Parties

The Complainant is Dolce & Gabbana s.r.l. of Milano, Italy, represented by Studio Turini, Italy.

The Respondent is Anna Bieniaszewska of Thornhill, Dumfriesshire, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <cheapdolcegabbanasale.com> is registered with GoDaddy.com, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 22, 2012.

On November 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.

On November 23, 2013, 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 and contact information in the Complaint.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2012.

The Center appointed James Bridgeman as the sole panelist in this matter on January 16, 2013. 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 relies on its rights as the licensee of the trademark DOLCE & GABBANA and in particular the following:

The Complainant is the owner of a large portfolio of registered trademarks and relies in particular to the following registrations:

DOLCE & GABBANA, Italian Registered Trademark number 33372387, filed on 26 July 1985;

DOLCE & GABBANA, International Trademark registration number R555568, registered on 14 February 1990;

DOLCE & GABBANA, International Trademark registration number 625152, registered on 13 July 1994;

DOLCE & GABBANA, International Trademark registration number 666432, registered on 24 April 1996;

DOLCE & GABBANA, Community Trademark registration number 000454066, registered on 15 February 1999,

DOLCE & GABBANA, Community Trademark number 001842079 registered on 43 December 2001.

The above trademark registrations are owned by GADO srl, and the Complainant has furnished a letter from Cristiana Ruella a board member of Gado srl confirming that the Complainant is the exclusive worldwide licensee of inter alia the above marks.

The Complainant maintains a website at the address “www.dolcenadgabbana.com”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the DOLCE & GABBANA mark was created by the combination of the two last names of the stylists Domenico Dolce and Stefano Gabbana who were the founders of a fashion house in the 1980s and has been adapted by the Complainant as its company name. Since then the DOLCE & GABBANA trademark has acquired a substantial goodwill across the world in the field of fashion and the trademark has acquired a famous status. In this regard the Complainant refers to previous decisions under the policy DOLCE & GABBANA s.r.l. v. Domains by Proxy Inc./Renee Carr,WIPO Case No. D2011-0597; DOLCE & GABBANA s.r.l. v. Agnes Varga,WIPO Case No. D2004-0482; DOLCE & GABBANA s.r.l. v. Victory, WIPO Case No. D2001-1175).

The Complainant submits that the disputed domain name <cheapdolcegabbanasale.com> is composed of the same root as, and is in fact identical to, the Complainant’s DOLCE & GABBANA trademark. The disputed domain name is composed of the words “Dolce” and “Gabbana” in combination with the added prefix “cheap” and the suffix “sale”. The additional elements do not distinguish the disputed domain name from the DOLCE & GABBANA trademark and in fact increase the likelihood of confusion as they refer to the selling arrangements for the Complainant’s products.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent was not authorised, licensed or otherwise allowed to use the DOLCE & GABBANA name or to apply for any domain name incorporating the DOLCE & GABBANA mark.

The Complainant submits that this raises a presumption that the Respondent has no rights or legitimate interest in the domain name and in support of this submission refers in particular to the decision of the panel Media West - GRS, Inc., Media West - MNC, Inc., Gannett Pacific Corporation, Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant(187640) [email protected], WIPO Case No. D2006-0478, where the panel stated: “The Respondents have also never been authorized by the Complainants to use the Complainants’ marks, in any way, shape or form, much less as part of the domain names, which gives rise to a presumption that the Respondents cannot establish that they have rights or any legitimate interest in the domain names.”

Furthermore, the Complainant asserts that the Respondent is not commonly known by that name.

The Complainant submits the disputed domain name was registered and is being used in bad faith.

The Complainant argues that it is improbable that the registrant of the disputed domain name was not aware of the Complainant’s rights in the trademark when the domain name was registered because DOLCE & GABBANA is a world famous trademark, as established in the above referenced decisions under the Policy WIPO Case No. D2011-0597, WIPO Case No. D2004-0482 and WIPO Case No. D2001-1175.

In support of this submission the Complainant refers to the decisions of the panels in SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF Claim No. 94956) where a finding of bad faith was made where the respondent knew or should have known of the registration and use of the trademark prior to registering the domain name in issue. Likewise in Marriott International Inc. v. John Marriott ( NAF Claim No. 94737); Canada Inc. v. Sandro Ursino (AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF Claim No. 95037).

The Complainant argues that there is no evidence of any reasonable efforts made by the Resondent to find out about third party rights in the disputed domain name. An Internet search against the words “dolce gabbana” would have disclosed the Complainant’s worldwide famous trademark.

The Complainant submits that the registration of the disputed domain name prevents the Complainant from reflecting its mark in the corresponding gTLD .com.

The Complainant further argues that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website or location or of a product or service on his website or location.

In support of this submission the Complainant has furnished in an annex to the Complaint, a print-out of pages from the website to which the disputed domain name resolved on October 12, 2012 and submits that the content posted on the website shows that the Respondent is offering unauthorized sales of counterfeit copies of original goods branded with the Complainant’s trademarks on the website.

The Complainant asserts that it knows that the products on offer are counterfeit, because the hand tags are not original, as they have no anti-counterfeiting elements such as holograms, plastic guarantee seals.

Finally, the Complainant submits that the Respondent registered the disputed domain name for sale to the highest bidder at auction. In support of this assertion the Complainant has annexed to the Complaint, copies of an exchange of emails purporting to negotiate a price for the disputed domain name with the Respondent. The email exchange was initiated by Complainant’s own counsel who described himself as a “Domain Specialist Executive at Register.it.” when contacting the Respondent.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:

(i) the domain name in dispute 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has furnished evidence that it is has rights as exclusive licensee of the registered trademark DOLCE & GABBANA in the form of copies of the above referenced trademark registrations owned by GADO srl, and a letter from a board member of GADO srl confirming that the Complainant has been granted the worldwide exclusive licence to use the mark.

This Panel rejects the Complainant’s argument that the disputed domain name is identical to the mark in which the Complainant has rights, however this Panel finds that the disputed domain name is confusingly similar to the DOLCE & GABBANA mark.

The distinctive and dominant elements of the disputed domain name are the words “dolce” and “gabbana”. The prefix and suffix “cheap” and “sale” are both non-distinctive and descriptive. While it is unlikely that the Complainant would ever use the word “cheap” in connection with its products, this Panel finds that on the balance of probabilities there is a likelihood of confusion among Internet users between the disputed domain name and the Complainant’s mark.

The Complainant has therefore succeeded in the first element of the test in as set out in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant asserts that neither itself nor the trademark owner GADO srl has granted any rights to the Respondent to use its distinctive trademark and furthermore that the Respondent is not commonly known by the domain name.

This Panel finds that the Complainant has made out a prima facie case that the Respondent has no such rights or legitimate interest since

- the disputed domain name is confusingly similar to the Complainant’s own corporate name and the DOLCE & GABBANA mark;

- the distinctive combination of the word elements “dolce” and “gabbana” in the disputed domain name clearly make reference to the DOLCE & GABBANA mark;

- there is no evidence that the Respondent is known by the disputed domain name;

- there is prima facie evidence that the Respondent is using the disputed domain name as the address of a website which is used as a vehicle for the sale of counterfeit products;

- the Respondent has not been granted any right to use the mark or name for any purpose.

It is well established under the Policy, that in such circumstances the burden of proof shifts to the Respondent to prove his rights. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that the consensus view among panelists is “[w]hile the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [see also paragraph 4.6 below in relation to respondent default]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” Among the relevant decisions are: Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, <croatiaairlines.com>, Transfer Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, <belupo.com>, Transfer Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912, <itaushopping.com>, Transfer Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393, <maybank.com>, Transfer Accor v. Eren Atesmen, WIPO Case No. D2009-0701, <accorreviews.com>, Transfer.

As no Response has been filed, this Panel finds that the Respondent has failed to discharge the burden of proof.

The Complainant has therefore also succeeded in the second element of the test in as set out in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

This Panel accepts that it is improbable that the registrant of the disputed domain name was unaware of the Complainant’s rights when the disputed domain name was registered. Given the distinctive character of the DOLCE & GABBANA mark and the fact that the disputed domain name is a combination of the distinctive elements “dolce” and “gabbana” in combination with the descriptive words “cheap” and “sale” this Panel finds that on the balance of probabilities the disputed domain name was selected and chosen to create an association with the Complainant’s DOLCE & GABBANA trademark and to take predatory advantage of the goodwill and reputation of the Complainant and the trademark.

The Complainant has furnished a print-out of the website to which the disputed domain name resolves and an internal report from an officer of the Complainant organization which, on the balance of probabilities, proves that the disputed domain name is being used in bad faith as the address of a website on which counterfeit DOLCE & GABBANA goods are being offered for sale.

In the absence of any Response or explanation by the Respondent, this Panel finds on the balance of probabilities therefore, that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her web site by creating a likelihood of confusion with the DOLCE & GABBANA mark as to the source, sponsorship, affiliation, or endorsement of her web site and the products offered on the website.

For completeness, this Panel finds that there is no evidence that the disputed domain name was selected and registered by the Respondent to sell it to the highest bidder at auction as alleged. The Complainant has furnished an exchange of email correspondence purporting to negotiate a sale of the disputed domain name. The correspondence was initiated by Complainant’s own counsel who described himself as a “Domain Specialist Executive at Register.it.” A willingness to sell a domain name when approached by a third party, does not prove any intention on the part of the Respondent at the time of registration.

This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. The Complainant has therefore also succeeded in the third and final element of the test in paragraph 4(a)(iii) of the Policy and is entitled to succeed in the application.

7. Decision

For the foregoing reasons, in accordance with paragraph 4 of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cheapdolcegabbanasale.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: January 29, 2013