The Complainant is Ciro Paone S.p.A., Italy, represented by Bird & Bird LLP, Italy.
The Respondent is Mark Schneider, United States of America.
The disputed domain name <kitonclothing.com> is registered with Moniker Online Services, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2020. On January 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 31, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 3, 2020.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 29, 2020. An email was received from a third party on February 13, 2020, by the Center. The Center acknowledged receipt of this email communication and informed the parties about the communication.
The Center appointed Eduardo Machado as the sole panelist in this matter on April 1, 2020. 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 Ciro Paone S.p.A., a company founded in 1968, in Naples, Italy, that engages in the manufacture, marketing and retail of apparel and fabrics through its KITON fashion brand, with more than 50 years of history. The Complainant is present worldwide with its lines of clothing, bags, shoes and fashion accessories, with a network of sales points in Italy, Europe, America, Asia and the Middle East.
The Complainant is the owner of trademark rights related to the KITON mark and logo in several jurisdictions, such as European Union Trademark Registration No. 000135036, filed in 1996 and granted in 1999. The Complainant’s trademark registrations are registered and are being used to cover goods in classes 18 and 25. The Complainant is also the owner of domain name <kiton.com>.
The disputed domain name was registered on February 18, 2017. Prior to the filing of the Complaint the disputed domain name resolved to a website that displays the Complainant’s trademark KITON and the KITON logo and looked like the Complainant’s website. Currently, the website to which the disputed domain name resolves is no longer active.
The Complainant claims that the disputed domain name is confusingly similar to its registered KITON mark as the disputed domain name reproduces the KITON mark in its entirety with the mere addition of the generic word “clothing”, which does not prevent the confusing similarity with the Complainant’s marks, but rather aggravates it, considering that the Complainant is active precisely in the fashion/clothing industry.
The Complainant further argues that the addition of the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to prevent the confusing similarity of the disputed domain name with the Complainant’s KITON mark, since it is well established that this element is to be disregarded in UDRP disputes.
In addition, the Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name considering that the Respondent cannot be commonly known by the KITON mark nor is the Respondent the owner of any trademark registrations or applications composed by the disputed domain name.
In this regard, the Complainant maintains that the disputed domain name was registered by the Respondent with the Complainant’s KITON trademark and business in mind, which is corroborated by the fact that the disputed domain name resolves to a website that displays the Complainant’s KITON mark, logo, and looks like an official KITON website, where KITON branded garments and accessories are offered for sale at discounted prices.
Lastly, the Complainant alleges that the Respondent’s registration and use of the disputed domain name would be in bad faith as the disputed domain name wholly reproduces the KITON mark, which the Respondent must have been aware of as the KITON mark would be very distinctive and internationally renowned, indicating the Respondent’ intention of passing off as the Complainant.
Furthermore, the Complainant claims that the Respondent’s bad faith would also be evidenced by the fact that he disputed domain name resolves to a website which reproduces the Complainant’s KITON mark and logo related to the sales of clothing articles at significantly lower prices than the Complainant’s usual prices, added by the use of a misleading copyright notice reproduced at the website, which falsely suggest a connection of the disputed domain name with the Complainant.
According to the Complainant, these circumstances would corroborate the Respondent’s intention of creating a likelihood of confusion with the Complainant’s KITON mark in order to attract Internet users to the disputed domain name instead of the Complainant’s official website and profiting off the disputed domain name and to prevent the Complainant from registering and using the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain the requested relief. These elements are:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder 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.
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1. As disclosed in Annex 11 of the Complaint, the Complainant is the owner of trademark registrations for the KITON word mark and logo since 1999.
Moreover, the disputed domain name reproduces, in its entirety, the KITON mark, with the mere addition of the generic term “clothing”. In this regard, the Panel considers that the addition of said term does not prevent a finding of confusing similarity with the Complainant’s KITON mark, taking into account that, besides from being a generic term, “clothing” is directly associated with Complainant’s main activity under the KITON mark, that is, the manufacture and sales of clothes and accessories. In this sense, the addition of “clothing” contributes for the confusing similarity of the disputed domain name with Complainant’s mark.
Additionally, the Panel reiterates that the addition of the gTLD .com ought not to be considered by the Panel in order to establish identity or confusing similarity between the disputed domain name and the Complainant’s trademark (see Topvintage.nl BV v. Domain Admin, WIPO Case No. D2017-1019“the various generic Top-Level Domains (“gTLDs”) in each of the disputed domain names are commonly disregarded for the purposes of comparison in cases under the Policy on the grounds that they are required for technical reasons only” see also Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175).
Thus, the Panel finds that paragraph 4(a)(i) has been satisfied.
The Complainant has alleged that the Respondent has no right or legitimate interests with respect to the disputed domain name.
There is no evidence that the Respondent has, before any notice of the dispute, ever been commonly known by the disputed domain name nor has made or is making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant has prior rights to the use of the KITON mark and has never authorized, licensed or permitted, in any way, the Respondent to register or use the disputed domain name.
Moreover, Annex 12 of the Complaint, provides evidence that the Respondent used the disputed domain name to direct to a website that reproduces the KITON mark and logo to advertise the Complainant’s branded products, with a noticeable lower price, in an attempt to pass off as the Complainant and to divert the Complainant’s consumers, disrupting the Complainant’s business and possibly selling counterfeit products.
Thus, the Respondent has no rights or legitimate interests in regard to the disputed domain name.
Therefore, the Panel concludes that the Complainant has succeeded to establish the second condition of paragraph 4(a) of the Policy.
In order to facilitate assessment of whether the bad-faith element is established, paragraph 4(b) of the Policy provides the following non-exclusive scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel finds that the circumstances described in paragraph 4(b)(iii) and (iv) of the of the Policy fit those of the current proceeding.
That is because, the KITON mark, registered by the Complainant in many jurisdictions before the registration of the disputed domain name, is very distinctive and has been in use for over 50 years by the Complainant to cover clothing articles.
In this sense, it is unquestionable that the registration of the disputed domain name, which is composed by the KITON mark in its entirety with the addition of the term “clothing”, which even aggravates the possibility of confusion among consumer given that the Complainant is active in the clothing segment, could only have been an attempt by the Respondent to associate the disputed domain name with the Complainant’s mark.
Moreover, the use of the Complainant’s trade mark and logo on it’s website demonstrates that the Respondent was well aware of the Complainant’s KITON mark and tried to profit off the registration and use of the disputed domain name by creating a likelihood of confusion with the Complainant’s KITON mark and attracting Internet users to the disputed domain name (see Sand Cph A/S v. Poddar, Sandeep, WIPO Case No. D2004-0927; and Guccio Gucci S.p.A. v. Edardy Ou, WIPO Case No. D2011-1028).
By attracting Internet users to the disputed domain name, the Respondent is also diverting the Complainant’s customers and, therefore, disrupting the Complainant’s business.
The Panel therefore finds that the Respondent has registered and is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website and by creating a likelihood of confusion with the Complainant’s KITON mark as to source or affiliation.
In addition, the Panel finds that the Respondent’s registration and use of the disputed domain name is also disrupting to the Complainant’s business as it diverts the Complainant’s customers to the disputed domain name rather than to Complainant’s official websites.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <kitonclothing.com> be transferred to the Complainant.
Date: April 15, 2020
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