WIPO Domain Name Decision: DRO2006-0007

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bencom SRL v. NetCorporation

Case No. DRO2006-0007

1. The Parties

The Complainant is Bencom SRL, of Ponzano Veneto (Treviso), Italy, represented by Studio Barbero, Italy.

The Respondent is NetCorporation, of Giessen, Germany.

2. The Domain Name and Registrar

The disputed domain name <benetton.ro> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2006. On November 7, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On November 8, 2006, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. Th 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 November 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2006. The Respondent did not submit any Response. Accordingly, the Center subsequently notified the Respondent’s default.

The Center appointed James Bridgeman as the sole panelist in this matter on January 15, 2006. 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 a sole shareholder’s company coordinated and directed by Benetton Group S.p.A. which was established in 1965, as a partnership by the Benetton family in Ponzano Veneto, Italy and is the owner of numerous registrations for its BENETTON and UNITED COLORS OF BENETTON trade marks throughout the world including:

- International Registration No. 431169 of July 19, 1977, BENETTON (word and device mark), classes 23, 24 and 25 covering inter alia (“i.a”) Romania;

- International Registration No. 477115 of April 19, 1983, BENETTON (word and device mark), class 3 covering i.a Romania;

- International Registration No. 480500 of September 19, 1983, BENETTON (word and device mark), class 16 covering i.a Romania;

- International Registration No. 493284 of May 28, 1985 BENETTON (word and device mark), classes 1, 2, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 17, 18, 19, 20, 21, 22, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42 covering i.a. Romania;

- International Registration N. 585678 of April 21, 1992 BENETTON (word and device mark), class 25 covering i.a. Romania;

- International Registration N. 585679 of April 21, 1992 BENETTON (word and device mark), class 25 covering i.a. Romania;

- International Registration N. 422904 of June 15, 1976, 012 BENETTON (wordmark), classes 23, 24, 25 covering i.a. Romania;

- International Registration N. 480499 of September 19, 1983, 012 BENETTON (wordmark), class 16 covering i.a. Romania;

- International Registration N. 485468 of April 27, 1984, 012 BENETTON, (wordmark), class 3 covering i.a. Romania;

- International Registration No. 519735 of December 15, 1987, 012 BENETTON (wordmark), classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 17, 18, 19, 20, 21, 22, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 covering i.a. Romania.

The Complainant is also the owner of the following Internet domain names <benetton.com>, <benetton.eu>, <benetton.it>, <benetton.be>, <benetton.ca>, <benetton.cc>, <benetton.hk>, <benetton.ph>, <benetton.pt>, <benetton.se>, <benetton.tk>, <benetton.tv>, <benetton.us>, <benetton.vu>, <benetton.info>, <benetton.net>, <benetton.org>, <benetton.com.cn>, <benetton.com.es>, <benetton.com.ph>, <benetton.com.mx>, <benetton.net.ph> and <benetton.org.cn>.

The only information available relating to the Respondent is that provided to the Registrar relating to the registration of the domain name in dispute, together with the conflicting claims that the Respondent made in correspondence with the legal representative of the Complainant, about its intended use of the domain name that are described infra.

The date of registration of the domain name in dispute is not provided either by the Registrar’s response to the Center’s request for registrar verification or the results of WHOIS database search furnished by the Complainant. It would appear that the registration has been in existence for at least six years as the WHOIS search results indicate that some of the information was updated in September 1999.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the domain name be transferred to the Complainant.

As regards the Complainants rights in the BENETTON trademark, the Complainant explains that the above listed trademark registrations were originally registered in the name of Benetton Group S.p.A and were recently transferred to the Complainant.

The Complainant has a presence in 120 countries around the world. It operates in the clothing sector with well-established brands such as the casual UNITED COLORS OF BENETTON, fashion oriented SISLEY and PLAYLIFE leisurewear and KILLER LOOP “streetwear” brands. The Complainant’s group of companies produces around 115 million garments every year. It has a commercial network of 5,000 retail outlets around the world, is increasingly focused on large floor-space megastores offering high quality customer services and now generates an annual turnover of approximately 1.8 billion euro, net of retail sales. The Benetton group is listed on Milan, Frankfurt and New York Stock Exchanges.

The Complainant’s group of companies is active in Romania as well as in Germany and has a number of shops authorized to sell BENETTON, 012 and SISLEY goods. In particular the Complainant has flagship shops in Bucarest (Romania); Cluj (Romania); Aachen (Nordhrein-Wesfallen Land – Germany); Baden Baden (Baden Wuerttemberg Land - Germany); Berlin (Berlin Land - Germany); Bochum (Nordrhein-Westfalen Land – Germany); Bonn (Nordrhein-Westfalen Land – Germany); Hamburg (Rosenstrabe – Germany); Hannover (Georgstrabe – Germany); Munich (Germany); Stuttgart (Germany).

The volume of sales of BENETTON marked goods in Romania and Germany amounted to €814,383,380 in 2000; €72,745,076 in 2001; €55,480,742 in 2002; €48,979,452 in 2003; €62.044.993,40 in 2004; €41,703,554 in 2005; €34,245,834 in 2006. As regards the investments in Romania and Germany, the Benetton group spent €1,749,530.31 in 2002, €1,685,224.21 € in 2003, €1,533,656.93 in 2004 and €1,466,164.23 in 2005.

The Complainant’s trademark BENETTON is used in most of the countries of the world including Romania and Germany and is supported by an intensive advertising campaign worldwide through inter alia its magazine COLORS on sale in forty countries and published in four languages.

The Complainant has also enhanced its own reputation, and the reputation of its BENETTON trademark, and other trademarks, throughout the world due to its sponsorship of cultural and sporting events and activities.

The Complainant submits that the sign BENETTON is strongly distinctive and does not have any meaning in any language. Therefore, in light of the distinctiveness of the Complainant’s trademark, the Complainant states that it is apparent that the Respondent chose this domain name in bad faith only to profit from the reputation of the Complainant.

The Complainant further submits that in comparing the Complainant’s trade mark and the domain name in dispute, the element “.ro” in the domain name is to be ignored as it is merely instrumental to the use of the domain name on the Internet. The Complainant submits that the domain name <benetton.ro> is thus identical to the prior registered trademark in which the Complainant has rights.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name, according to paragraph 4(a)(ii) of the Policy.

The Complainant submits that Respondent has registered the domain name without the authorization of the Complainant and at the time of drafting of the present Complaint the domain name remained inactive. As soon as it became aware of the registration of the domain name at issue, the Complainant sent a cease and desist letter sent on June 24, 2005, to the known address of the Respondent via registered mail and email.

On June 27, 2005, the Respondent replied to the authorized representative of the Complainant and stated inter alia that it intended to use the domain name <benetton.ro> in connection with “a Jewish Charitable Group that is this month being established in Romania for the restoration of destroyed cultural heritage”.

The Complainant decided to await some time in order to verify the actual use of the contested domain name as described by the Respondent. Since no activity whatsoever was appearing on the web site, a reminder of the cease and desist letter was then sent on September 29, 2005, to the known address of the Respondent via mail and email.

The Respondent replied via email on October 18, 2005, this time stating – much to the Complainant’s surprise – as follows:

“I represent a new political theory called Benetton and we are based in Romania. Benetton.ro is going to be our website. To be brief, your client believes that it hurts its good business. Thank you for your interest in our domain name. If you would like to appropriate our name for your commercial purposes then you would have to offer a price commensurate with the importance we put on our domain name and its future which is vast”.

The authorised representative of the Complainant then requested to the Respondent to indicate the price that it considered to be appropriate. The Respondent replied “our offer for the requested domain is as follows: $ 8000”.

The Complainant contends that notwithstanding the clear bad faith registration evidenced by the correspondence exchanged, neither of the two alleged projects were ever reflected in any actual web site nor are they currently on line on the Internet. The Complainant decided to additionally postpone any further action for over one year keeping the domain name regularly monitored. While the Respondent has regularly renewed the domain name in dispute, it has never used the domain name for any active web site.

In light of the clear mere passive holding, the Complainant sent a final reminder on June 3, 2006 inviting the Respondent to transfer the domain name for the documented out-of-pocket costs directly related to the domain name. The Respondent neither replied to that letter nor relinquished the domain name. The Complainant therefore decided to file the present Complaint.

The Complainant submits that the Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the contested domain name in connection with a bona fide offering of goods or services before any notice of the dispute. Upon information and belief, the Respondent is not commonly known by the domain name as an individual, business or other organization and “Benetton” is not the family name of the Respondent.

The Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark BENETTON. As stated inter alia in Alleghany Pharmacal Corporation v. Hair for Life, WIPO Case No. D2003-1045, “mere registration of a domain name without use does not confer rights or legitimate interests in respect of the domain name”. Along these lines, see also Ingram Micro, Inc. v. Kalron, Inc., WIPO Case No. D2001-1252, usDocuments, Inc. v. Flexible Designs, Inc. / Craig Dinan, WIPO Case No. D2003-0583.

The Respondent initially alleged that the domain name was intended for a “Jewish charitable group for the restoration for destroyed cultural heritage”, and only four months later the Respondent stated the following regarding its intended use:

Moreover, the Complainant contends that notwithstanding the confused indications as to the intended use of the domain name, the Respondent has not made any use whatsoever of the domain name in over six years.

The Complainant further contends that in light of the contradictory indications as to the alleged use of the domain name, in view of the total lack of any use for over a period of six years and considering the offer for sale for US$ 8000.00, which is relevant also as a proof of bad faith, it is evident that the Respondent has no rights or legitimate interest in the domain name.

The Complainant contends that in view of the fact that the disputed domain name corresponds to a well-known trade mark, considering that the disputed domain name was registered primarily for the purpose of selling it to the Complainant for an amount well in excess of the documented out-of-pockets costs and taking into account that the disputed domain name is inactive since its registration, the disputed domain name was registered in bad faith and is being used in bad faith.

The Complainant further contends that in light of the international reputation of the trademark BENETTON, including the extensive reputation in both Romania and Germany, the Respondent must have been aware of the existence of the Complainant’s trademark registration BENETTON at the time of the registration as was held by the panel in Benetton Group S.p.A. v. Azra Khan, WIPO Case No. D2002-0810 (<unitedcolorsofbenetton.com>): “Complainant has put forward evidence that his trademarks are well known, and the Panel finds that the trademarks of the Complainant must have been known to Respondent when registering the Domain Name”. The decision of the panel in Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002 was also along the same lines (“Complainant’s trademarks are well known in Romania, and accordingly Respondent is presumed to have knowledge of these marks before the registration of the Domain Names”).

The Complainant further cites Benetton Group S.p.A. v. Wonil Park WIPO Case No. D2002-0577, where the Panel held that “registration of a well-known mark may be an indicia of bad faith where there is no justification for the registration”. The Complainant contends that in the present case, the Respondent did not demonstrate any evidence of use of the domain name in connection with a bona fide offering of goods and services for several years.

The Complainant also cites Benetton Group S.p.A. v. Azra Khan WIPO Case No. D2002-0810, where the Panel found: “Given the Complainant’s numerous trademark registrations and its wide reputation with connection with the mark United Colors of Benetton, it is also hard to conceive that the Respondent could legitimately use the domain name. It is not likely that any trader would choose a name including the trademark United Colors of Benetton if not to create an impression of association with the Complainant.”

The Complainant submits that paragraph 4(b)(i) of the Policy is clearly applicable to the present case. The disputed domain name has been clearly offered for sale by the Respondent as evidenced in the exchange of correspondence between the Complainant’s authorised representative and the Respondent. The Complainant points to the decision in Educational Testing Service v. TOEFL WIPO Case No. D2000-0044, where the Panel found that an offer to sell generally was sufficient evidence for a finding of bad faith. similarly, in McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd WIPO Case No. D2004-0078, the panel held that bad faith may be inferred from a respondent’s offer for sale of the disputed domain name.

The Respondent requested the sum of US $8,000 for the transfer of <benetton.ro> domain name registration. The Complainant argues that this amount is well in excess of the documented out-of-pocket costs directly related to the registration of a domain name as evidenced in Benetton Group SpA v Domain for Sale, WIPO Case No. D2001-1498 where the amount of $450.00 was also considered well in excess of the documented out-of-pocket costs and A.P. Møller - Mærsk A/S v. Bich Vy Le Ngoc/An Phuoc Minh – Vietnam, WIPO Case No. D2005-0079 (where the sum sought was US$10,000).

The Complainant also points out as additional circumstances evidencing bad faith, that notwithstanding its registration of the domain name <benetton.ro> at least in the year 2000, it has never been actively used by the Respondent for a dedicated web site as both evidenced by the statements of the Respondent and from the monitoring activities conducted by the Complainant.

The Complainant cites to the fact that in Nike, Inc. v. Crystal International, WIPO Case No. D2002-0352 as well as in many other decisions, it was held that non-use as such does not determine bad faith. But the Complainant argues that the non-use for a long time of the domain name in the context of the well-known trademark BENETTON, is certainly evidence of bad faith (see among others, Banco Santander Central Hispano S.A. v. Taiwan Motorbikes Netherland BV Panamá, WIPO Case No. D2002-0192, “The non use for six months by the Respondent could be considered an element of bad faith, but it has to be preceded by the bad faith registration as that is presently required by the Policy”). The Complainant contends that the passive holding of the disputed domain name by the Respondent since its registration constitutes bad faith registration and use, citing the following cases: Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001 (passive holding for over 7 years); Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001 (non use for more than 4 years).

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 said domain name; and

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

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark BENETTON through its large portfolio of trademark registrations.

The domain name in dispute <benetton.ro> is identical to the Complainants trademark. As the Complainant has correctly submitted the suffix “.ro” is ignored when comparing the trademark and the domain name.

The Panel finds that the Complainant has therefore satisfied the first element in the test in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not filed a Response or made any submissions in these proceedings. In correspondence exchanged between the legal representative of the Complainant prior to issuing the Complaint, the Respondent made two contradictory statements relating to its intentions to use the domain name. These statements remain unsupported. There is no explanation as to why this distinctive name was chosen for a domain name. It therefore appears that the Respondent knowingly chose the Complainant’s well known and distinctive trademark as its domain name. The Respondent has never used the domain name as an address for a web site as it claimed it intended to do.

The Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark BENETTON. There is no evidence of its use of, or demonstrable preparations to use, the contested domain name in connection with a bona fide offering of goods or services before any notice of the dispute. There is no evidence that the Respondent is commonly known by the domain name as an individual, business or other organization and Benetton is not the family name of the Respondent.

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the domain name, the effect of which is to shift the burden of proof onto the Respondent. The Respondent has not discharged this burden and it follows that the Complainant has succeeded in establishing the second element in the test in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The date of registration of the domain name in issue is unclear, but it appears to have been updated in September 1999. The Complainant has provided evidence of a long existing reputation in the use of its BENETTON name and mark and the trademark registrations listed supra date back to the 1970s. The Respondent must in the circumstances have been aware of the existence of the Complainant and its rights in the BENETTON trademark at the time the domain name was registered. The Respondent has provided a contact address in Germany and chose to register the domain name at issue on the Romanian ccTLD. The Complainant has an extensive international reputation among consumers in countries throughout the world including both Germany and Romania.

This Panel accepts the Complainant’s submissions that the Respondent registered the domain name at issue primarily for the purpose of selling it to the Complainant for an amount well in excess of the documented out-of-pockets costs. The Respondent offered to sell the domain name registration to the Complainant for US$ 8,000. This panel has no documentation relating to the Respondent’s out-of-pocket costs in the registration of the domain name, but it is reasonable to infer that the sum of US$ 8,00.00 is well beyond the out-of-pocket costs directly related to the registration.

The disputed domain name appears to have been inactive since its registration. In the circumstances of this case, such passive holding of the disputed domain name by the Respondent since its registration is also evidence of bad faith registration and use.

This Panel is satisfied that the Respondent has registered and is using the domain name in bad faith.

The Panel finds that the Complainant has therefore satisfied the third and final element of the test in paragraph 4(a) of the Policy and it entitled to succeed in its application.

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 <benetton.ro> be transferred to the Complainant.

James Bridgeman
Sole Panelist

Dated: January 31, 2007