WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Carolina Herrera, Ltd. v. Europel srl

Case No: D2002-0816

The complainant is Carolina Herrera, Ltd., 501 Seventh Avenue, New York, NY 10018, United States of America, represented by Weil, Gotshal & Manges LLP of United States of America.

The Respondent is Nicolino Colonnelli/Europel srl, Viale Della Vittoria 138, Alba Adriatica, Te 64011, Italy.

The disputed domain name <carolinaherrera.net> is registered with Register.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 30, 2002. On August 30, 2002, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name(s) at issue. On September 6, 2002, Register.com transmitted by email to the Center its verification response confirming that Nicolino Colonnelli is listed as the registrant and providing the contact details for the administrative, billing and technical contact. In response to a notification by the Center that the Complaint was administratively deficient as Nicolino Colonnelli should be named as Respondent, the Complainant filed an amendment to the Complaint on September 12, 2002. The Center verified that the Complaint together with the amendment to 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 September 16, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was initially set to October 6, 2002. A request of extension for 10 days was filed on October 4, 2002, by Respondent’s attorney, Roger D. Pearson, Esq. Briguglio & Associates, on the grounds that:

"We are having difficulty contacting our clients to discuss the above case and its defenses. We need instructions from the client on how to proceed"

Following this request, the Center granted an extension of 10 days, - to October 17, 2002. On October 17, 2002, the attorney for Respondent filed a request for an additional extension to file a Response. The attorney for Complainant agreed to an additional 10 days extension, and the Center granted an extension to October 27, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2002.

The Center appointed Arne Ringnes as the sole panelist in this matter on November 6, 2002. 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.

Complainant’s Activities and Trademarks

4.1 The Complainant is Carolina Herrera, Ltd., a corporation organized and existing pursuant to the laws of the State of Delaware, with its principal place of business in the State of New York. Complainant was founded over 20 years ago, and is a corporate entity that operates all over the world under the name "Carolina Herrera, Ltd.". Complainant designs and manufactures luxury fashion goods bearing the "Carolina Herrera" name. Complainant conducts this business through its own "Carolina Herrera" retail stores located at various locations around the world (e.g., Madrid, Spain, New York, U.S.A., Canada and Portugal). In addition, Complainant licenses the "Carolina Herrera" name for a number of different products, including eyewear, ready to wear and lifestyle products which are sold in licensed, stand–alone Carolina Herrera stores, or sold through a number of high-end retail establishments that also have stores around the world. Complainant also licenses the "Carolina Herrera" name to related parties for the design, manufacture and distribution of fragrance throughout the world. According to an affidavit by Robert McCormick, Vice President of Carolina Herrera, Ltd., "Carolina Herrera" products in the year 1999 earned approximately EUR 46,000,000 in annual revenues. In the year 2000, "Carolina Herrera" products earned approximately EUR 59,000,000 in annual revenues and in 2001, the products earned approximately EUR 63,000,000 in annual revenues.

4.2 The trademarks on which this Complaint is based are, 3 U.S. trademark registrations for the typed wordmark "CAROLINA HERRERA", i.e. No. 1,409,515, filed on November 14, 1985, for the use in connection with goods and services in International Class 025 (i.e., women’s’ clothing); No. 2,052,980, filed on August 27, 1996, in connection with goods and services in International Class 003 (i.e., perfumes and colognes), and No. 2,598,599, filed on November 5, 1999, in connection with goods and services in International Class 035 (i.e., retail shops).

Further, Complainant has registered certain trademarks in countries other than the U.S. for the typed wordmark "CAROLINA HERRERA"; i.e. People’s Republic of China Registration No.1460370 for the use in connection with goods and services in International Class 003 (i.e., perfumes and cosmetics) and Registration No. 1208250M3 in Spain in connection with goods and services in International Class 003 (i.e., perfumes and cosmetics). The owner of this last trademark is Carolina Herrera S.A.; a wholly-owned subsidiary of Complainant.

Complainant has also registered a number of trademarks that are derivatives of "Carolina Herrera"; i.e. U.S Registration No. 1,812,215, filed on January 14, 1993, for the typed word mark "CAROLINA HERRERA STUDIO"; U.S. Registration No. 1,948,543, filed on November 16, 1994, for the typed word mark "FLORE CAROLINA HERRERA"; U.S. Registration No. 2,367,345, filed on December 12, 1996, for the stylized word mark "AQUAFLORE CAROLINA HERRERA"; Italian Registration No. 413347 for the stylized word mark "CH CAROLINA HERRERA", French Registration No. 97700001 for the stylized mark "CAROLINA HERRERA + CH", and People’s Republic of China Registration No. 1083353 for the stylized mark "CAROLINA HERRERA Device".

Further, the Complainant has pending before the United States Patent and Trademark Office five, applications for other derivatives of the "CAROLINA HERRERA" mark; i.e. U.S. Application Serial No. 75/878,445, filed on December 22, 1999, for the typed word mark "CH CAROLINA HERRERA", U.S. Application Serial No. 75/903,664, filed on January 26, 2000, for the stylized word mark "CH CAROLINA HERRERA NEW YORK"; U.S. Application Serial No. 76/164,109, filed on November 12, 2000, for the stylized word mark "CAROLINA HERRERA CHIC" and U.S. Application Serial No. 76/237,191, filed on April 6, 2001, for the typed word mark "212 CAROLINA HERRRERA".

In the U.S. alone, Complainant has a total of six registrations and five pending applications for the "Carolina Herrera" trademark or derivatives thereof.

4.3 Respondent has registered the domain name <carolinaherrera.net> on March 16, 2000. On its website, Respondent offers Italian leather goods, and the website includes the following text: "ARE YOU INTERESTED ON MY DOMAIN ????? CONTACT ME SOON !!!!!!" and the text: "ARE YOU INTERESTED ON MY DOMAIN ???? IT COSTS 50.000 US $$ ONLY! CONTACT ME SOON !!!!!!." Further, the website contains links to the following sites: <europel.it>, <versace.org> and <mipel.net> and a picture of a male person. On the website of <europel.it> it is informed that "Since 1974 we have been the referring point for some of the most important wholesalers, chain of stores, department stores and foreign importers who purchase leather goods in Italy".

By letter of December 12, 2001, Complainant’s attorneys wrote to Respondent demanding that Respondent should relinquish immediately the registration of the domain name and requesting Respondent within five business days to assure in writing that it would comply with the demand. Respondent replied to the letter on January 21, 2002, stating that it would not follow the request by Complainant and further stating that Complainant would have "a priority for possible negotiations for transferring the site" if so interested.

The Complainant contends as follows:

Respondent’s domain name <carolinaherrera.net> is identical to Complainant’s famous "Carolina Herrera" trademarks.

Complainant has extensive intellectual property rights in the "Carolina Herrera" mark and derivatives thereof. It is beyond dispute that the domain name <carolinaherrera.net>, as registered by Respondent is identical to Complainant’s registered "Carolina Herrera" trademarks. Accordingly, the Complaint satisfies the first element under the Policy, paragraph 4(a)(i).

Respondent has no rights or legitimate interests in respect of the domain name <carolinaherrera.net>.

Respondent is not a licensee of Complainant nor associated with Complainant in any way whatsoever. Complainant has never authorized Respondent to use the "Carolina Herrera" mark or trade under the "Carolina Herrera" name. In addition, Respondent is not commonly known as "Carolina Herrera" pursuant to the Policy, paragraph 4(c)(ii). Respondent is known under the name Europel srl and the picture of an individual male at the website hardly resembles a person named "Carolina Herrera".

Further, Respondent is an Italian company in the business of buying and selling Italian leather goods, namely ladies’ handbags, luggage, belts and wallets. Despite this, Respondent is not using, nor did Respondent prepare to use, the domain name <carolinaherrera.net>, in connection with any bonafide offering of goods or services pursuant to Paragraph 4(c) (i) of the Policy. In this connection, Complainant contends that mere offers to sell goods or provide services do not secure rights to use a domain name incorporating the famous and distinctive trademark of another, unless such specific authorization is given (Nokia Corp. v. Holms, WIPO Case No. D2002-0001) In fact, Complainant contends, Respondent registered and uses the domain name with the illicit motive to profit from the famous "Carolina Herrera" name. In this connection, Complainant refers to information at the website of Respondent stating that "ARE YOU INTERESTED ON MY DOMAIN?????CONTACT ME SOON!!!!!!".

It is further argued that Respondent registered and uses the Domain Name with the illicit motive to profit from the famous "Carolina Herrera" name, and Complainant contends that Respondent registered and uses the domain name with the intent to sell the Domain Name back to Complainant or any other interested party and to lure consumers to Respondent’s own business of selling leather goods and accessories.

Accordingly, it is contended that Respondent registered and uses the domain name in bad faith with the sole intent to capitalize from the valuable goodwill built up in the famous "Carolina Herrera" trademarks.

Respondent’s domain name has been registered and is being used in bad faith.

In relation to this element of the Policy, Complainant contends, firstly, that Respondent has attempted to sell the domain name to Complainant and to interested parties. In this connection, Complainant refers to Respondent’s letter of January 21, 2002, in which Respondent stated that it was willing to guarantee Complainant a priority in negotiations relating to the sale of the site. Further, Complainant argues that Respondent has made further public offers to sell the domain name to any interested parties, by statement on its website (see above), and further by the links to Respondent’s additional, virtually identical website which explicitly states that Respondent’s domain names are for sale for USD 50,000.

Complainant contends that:

"Respondent seeks to capitalize in its own retail and wholesale endeavours from the unauthorized registration and use of the "Carolina Herrera" name, so famous in the realm of fashion. This is the classic example of "opportunistic bad faith".

Accordingly, also element 4 (a)(iii) is proved to be present.

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

The first element under the Policy to be proved by the Complainant is that:

"Your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights"

see Article 4 (a)(i), under the Policy.

The basis for this complaint is a number of trademark registrations and trademark applications in the United States of America as well as in other countries (the People’s Republic of China, Spain, France, Italy and Portugal). Some of these registrations and applications regard derivatives of the Carolina Herrera trademark, see paragraph 4.2 above. Further, the trademarks and applications include the personal name Carolina Herrera.

In order to decide whether element 4 (a)(i) under the Policy is proved, it is sufficient that Complainant has registered several trademarks for the typed word mark CAROLINA HERRERA. It can be concluded that Respondent’s domain name <carolinaherrera.net> is undoubtedly identical or confusingly similar to Complainant’s registered trademark "CAROLINA HERRERA"; U.S. Registration No. 1,409,515, filed on November 14, 1985; U.S. Registration No. 2,052,980, filed on August 27, 1996; U.S. Registration No. 2,598,599, filed on November 5, 1999; the People’s Republic of China Registration No. 1460370 (filing date not informed), and Registration No. 1208250M3 in Spain, filed on August 21, 1987.

The Administrative Panelist does not therefore need to discuss whether the domain name <carolinaherrera.net> is confusingly similar to Complainant’s derivative trademarks, nor is it necessary for the Administrative Panel to discuss whether trademark applications may suffice as a "trademark" under the Policy.

Accordingly, the Administrative Panel finds that the first element of the Policy is satisfied.

The second condition to be proved by the Complainant is that Respondent has:

"… no rights or legitimate interests in respect of the domain name."

see Article 4 (a)(ii), under the Policy.

It is held by Complainant that Respondent does not have any rights in the trademark "Carolina Herrera" as a licensee or otherwise. These facts are not disputed by Respondent, in fact Respondent has failed to reply to Complainant’s contentions. There are no other circumstances presented to the Panelist which could support the view that Respondent has any contractual rights to use the trademark as a domain name. Further, there is no evidence which could support the view that Respondent has legitimate interest in the domain name. In this respect, the Administrative Panel firstly points out that the domain name was registered at a later date than the registration of the "Carolina Herrera" trademarks and it is also proved that products under the trademark "Carolina Herrera" have been marketed and sold internationally for a number of years before Respondent registered its domain name in March 2000. Neither is there any evidence that could support the view that, under the Rules Article 4(c)(ii), Respondent has been commonly known by the domain name. As held by Complainant, Respondent’s name is Europel srl and Respondent associates itself with a picture of an individual male, hardly resembling a person named "Carolina Herrera". Further, the Administrative Panel refers to the fact that Respondent has registered the domain name <versace.org>, see. Exhibit 14 to the Complaint. This fact supports the conclusion that the Respondent does not have any legitimate interest in the mark, see Experience Hendrix. LLC v. Denny Hammerton and the Jimi Hendrix Fan Club, WIPO Case D2000-0364 (August 15, 2000).

Accordingly, the Administrative Panel finds that Respondent does not have rights or legitimate interests in respect of the domain name and that the second condition of the Policy is proved.

The third condition of the Policy to be proved by the Complainant is that

"your domain name has been registered and is being used in bad faith",

see Article 4 (a)(iii).

According to Paragraph 4 (b) (i) of the rules, evidence of the registration and use in bad faith may be circumstances indicating that the Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant or to a competitor for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.

The Respondent offers – or markets – certain leather goods at its website, and it could possibly be argued that this indicates that Respondent has not primarily registered the domain name for sale to others. However, in the opinion of the Administrative Panel the fact that Respondent’s website contains a specific offer for the sale of the domain name proves otherwise. Hence, the website includes the following offer: "ARE YOU INTERESTED ON MY DOMAIN ????? CONTACT ME SOON !!!!!!". Further the website also contains the text "ARE YOU INTERESTED ON MY DOMAIN ???? IT COSTS 50.000 US $$ ONLY! CONTACT ME SOON !!!!!!." It should be noted that Complainant contends that this latter statement is set forth at virtually identical websites by links from the "www.carolinaherrera.net" website. Looking at the evidence submitted in this respect, i.e. Exhibit 10 to the Complaint, it seems however that also this statement is set forth at the "www.carolinaherrera.net" site. In any case the evidence submitted by the Complainant sufficiently proves that the domain name <carolinaherrera.net> is registered and is being used in bad faith.

In addition to the offers for sale of the domain name at a price of USD 50,000, which are directed at the public at large, Respondent has also made an implicit offer to the Complainant itself. Accordingly, as a reply to letter of December 12, 2001, from Complainant’s attorneys, Respondent stated in its letter of January 21, 2002, that Complainant would have "a priority for possible negotiations for transferring the site" if so interested. The Administrative Panel will further add that merely the fact that Respondent has registered a domain name that is identical or confusingly similar to a well known trademark without any legitimate interest in the mark, indicates that Respondent acted in bad faith when registering the domain name. The trademark CAROLINA HERRERA is also incorporated in a number of domain names registered by the Complainant. Taken into account the offer for sale at respondents website(s) it is proved in the opinion of the Administrative Panel that the domain name also is being used in bad faith.

With reference to the Policy Article 4 (b) (iv), it should further be noted that by using the domain name for a website which offers inter alia leather products, Respondent also intentionally attracts customers to its website by creating a likelihood of confusion with Complainants CAROLINA HERRERA trademark. The Administrative Panel agrees with the Complainant that in this way, the Respondent capitalizes in bad faith on the goodwill that is associated with the Complainant’s mark.

On this basis, the Administrative Panel concludes that the third condition of the Policy is proved.

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 <carolinaherrera.net> be transferred to the Complainant.