WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gianni Versace S.P.A. v. Nicolino Colonnelli - Europel SRL
Case No. D2008-0570
1. The Parties
The Complainant is Gianni Versace S.P.A., of Milan, Italy.
The Respondent is Nicolino Colonnelli - Europel SRL, of Alba, Italy.
2. The Domain Name and Registrar
The disputed domain name <versace.org> (the “Domain Name”) is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2008. On April 15, 2008, the Center transmitted by email to Register.com a request for registrar verification in connection with the Domain Name. On April 15, 2008, Register.com transmitted by email to the Center its verification response confirming that the Respondent was 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 April 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2008.
The Center appointed Anna Carabelli as the sole panelist in this matter on May 22, 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 is the owner of the following trademark registrations:
- Italian registration VERSACE (word mark) filed on July 9, 1998 N. MI98C006903 and registered on November 10, 1998 N. 761385 in class 42 (Annex 3-1 to the Complaint)
- Italian registration VERSACE (word mark) filed on July 30, 1999 N. MI99C008180 and registered on November 5, 1999 N. 793827 in classes 08, 19, 20, 21 and 24 (Annex 3-2 to the Complaint)
- Community Trademark Registration VERSACE (word mark) filed on May 18, 2000 and registered on September 10, 2001 N. 1665439 in classes 1 to 42 (Annex 3-3 to the Complaint)
- International registration VERSACE (word mark) registered on December 2, 1999 N. 726311 in classes 8, 19, 20, 21 and 24 covering Austria, Benelux, Switzerland, China, Czech Republic, Germany, Egypt, Spain, France, Liechtenstein, Republic of Korea, Morocco, Monaco, Poland, Portugal, Rumania, Slovakia, Slovenia, Yugoslavia, and San Marin (Annex 3-4 to the Complaint).
The Complainant is also the owner of over 1,500 trademark registrations all over the world consisting of or comprising the word “versace” (as per Annex 4 to the Complaint).
The Complainant is one of the world’s leading international fashion design houses founded by fashion designer Gianni Versace.
The Complainant designs, manufactures, distributes and retails fashion and lifestyle products, including leather goods, worldwide.
The Complainant has 137 boutique locations around the world and over 1,800 multi-brand showrooms (as per Annex 5 to the Complaint).
The trademark VERSACE is widely known all over the world and has been supported by intensive advertising campaigns worldwide (as per Annex 8-1).
The Complainant has registered the word “versace” as a domain name either alone or in combination with other words under several different TLDs (such as <versace.com>, <versace.eu>, <versace.it>, <versace.net>, <versace.biz>, <versace.mobi>, <versace.cn>, <versace.co.in>, <versace.dk>, <versace.hk>, <versace.info>, <versace.kz>, <versace.sg>, <versace.tw> <gianniversace.biz>, <versaceboutique.biz>, <versacecouture.biz>, <versacecollection.biz>, <versacesport.biz> - see Annex 9 to the Complaint) under which operate websites where the products and services offered under the VERSACE brand are promoted.
The Domain Name redirects to a website where Internet users are invited to contact Nicolino Colonnelli, who is the Director of Europel SRL (Annex 10 to the Complaint).
The above website contains a number of links to other websites managed by the Respondent (Annex 10 to the Complaint), including a link to the website “www.europel.it” promoting the Respondent’s activities (Annex 11 to the Complaint) and products. It appears from the website, that the Respondent operates in the field of leather goods. It also contains sponsored links.
The Complainant sent two cease-and-desist letters to the Respondent on September 27, 2005 (Annexes17-1 and 2) and then on February 5, 2008, both via email, which apparently was duly received, and via registered email, which could not be delivered to the Respondent’s known address.
The Respondent never replied.
The Respondent has also registered other domain names identical or similar to third parties’ registered trademarks: <ferrari-italia.com> (Annex 14-1 to the Complaint) and <airlauda.com> (Annex 14-2 to the Complaint). The Respondent has published at “www.airlauda.com”, a similar web page with the full data of his company and the link to “www.versace.org” website (Annex 14-3).
5. Parties’ Contentions
The Complainant’s contends that:
The Domain Name is identical to trademarks in which the Complainant has rights
The Respondent has no rights or legitimate interests in respect of the Domain Name since it is not a licensee or an authorized agent of the Complainant nor was it in any other way authorized to use the Complainant’s trademark.
In addition, the Respondent has not provided any evidence of its use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services before any notice of the dispute.
- The website corresponding to the Domain Name is mainly used to redirect Internet users to other websites managed by the Respondent and in particular to the Respondent’s website “www.europel.it” (promoting the Respondent’s activities in the sector of leather goods which is potentially competing with the Complainant’s activities) and contains various banners and advertisements, and such a use cannot be considered as a legitimate non commercial or fair use of the Domain Name.
- The Domain Name was registered in bad faith since the Respondent could not have possibly ignored the Complainant’ trademark, being widely known and widely publicized.
- The Domain Name is being used in bad faith to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s mark and to earn commission whenever an Internet user visits the website and clicks on one of the sponsored link contained therein.
- The Respondent was found as acting in bad faith in the Decision Carolina Herrera, Ltd. v. Europel srl, WIPO Case No. D2002-0816, where the Respondent was using a similar website inviting Internet users to contact him and containing links to the following websites: “www.europel.it”, “www.mipel.net” and also “www.versace.org”.
In support of its contentions the Complainant refers to a number of decisions under the Policy.
Consequently, the Complainant requests the transfer to it of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the complainant’s trademark or service mark; 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by the respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Domain Name entirely incorporates Complainant’s trademark VERSACE. It is an established principle that the addition of the gTLD “.org” has no legal significance when comparing the domain name and the complainant’s trademark (Telecom Personal, S.A. v. Namezero.com, Inc, WIPO Case No. D2001-0015 and Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760).
Based on the above the Panel finds that this element has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the respondent has commonly been known by the domain name; and (iii) legitimate non commercial or fair use of the domain name.
The Complainant contends that the Respondent is not nor has ever been a representative of the Complainant or licensed to use the VERSACE trademark and that it is not commonly known by the Domain Name.
The Domain Name is mainly used to redirect Internet users to other websites and, in particular, to the Respondent’s website “www.europel.it” and contains sponsored links and banner. The Panel agrees that such use cannot constitute a use in connection with a bona fide offering of goods and services since the Respondent is using the Domain Name to intentionally attract for commercial gain Internet users by trading on the goodwill associated with the Complainant’s trademark.
The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by previous panels in many WIPO UDRP decisions, in such a case the burden of proof shifts onto the respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683; Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003).
The Respondent has failed to submit an answer to the Complaint.
In the light of the above, the Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Complaint’s trademark VERSACE is undoubtedly well known in Italy and worldwide and widely publicized globally, and it is inconceivable that the Respondent registered the Domain Name unaware of the Complainant’s rights in its VERSACE mark. The Panel concludes that the Respondent knew or should have known of the existence of the Complainant’s trademark and the Domain Name was therefore registered in bad faith.
The Respondent has also been using the Domain Name in bad faith to intentionally attract for commercial gain Internet users. As a matter of fact the Domain Name corresponds to a web page containing various links, including a link to the Respondent’s website “www.europel.it” where the Respondent’s activities in the leather goods sector and products are publicised. In doing so the Respondent is clearly trading on the goodwill associated with the VERSACE brand and mark. Such conduct where the Respondent sought or realized commercial gain indicates the Respondent’s bad faith as stated in many previous WIPO UDRP decisions (Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387; Gianfranco Ferré S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancome Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383.
In the Panel’s view, the Respondent’s bad faith is also suggested by the fact the Respondent was engaged in similar conduct in the past (Carolina Herrera, Ltd. v. Europel srl, WIPO Case No. D2002-0816) and failed to reply to the Complainant’s cease-and-desist letters.
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 <versace.org> be transferred to the Complainant.
Dated: June 5, 2008