The Complainant is Dolce & Gabbana s.r.l. of Milano, Italy, represented by Studio Turini, Italy.
The Respondent is nan yangmaoyi of Lijiang, Yunnan, China.
The disputed domain name <doudouneblousondolcegabbana.com> (the “Disputed Domain Name”) is registered with Shanghai Yovole Networks, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2013. On April 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 9, 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.
On April 9, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 10, 2013, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 April 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2013.
The Center appointed Kar Liang Soh as the sole panelist in this matter on May 13, 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.
“Dolce” and “Gabbana” are the last names of the stylists who founded the “Dolce & Gabbana” maison in the mid 1980’s. “Dolce & Gabbana” is the Complainant’s name. The Complainant is the exclusive licensee of the trademark DOLCE & GABBANA, including the following trademark registrations:
|
Jurisdiction |
Trademark Number |
Registration Date |
|
Italy |
372387 |
July 26, 1985 |
|
International Registration |
555568 |
February 14, 1990 |
|
International Registration |
625152 |
July 13, 1994 |
It has been held by a previous UDRP panel that the trademark DOLCE & GABBANA is a well-known trademark (see Dolce & Gabbana S.r.l. v. Domains by Proxy, Inc. / Renee Carr, WIPO Case No. D2011-0597).
The Disputed Domain Name was registered on October 21, 2012. The Disputed Domain Name resolved to an active website on or before the Complaint. The website uses the words “Dolce Gabbana” and the letters “D&G” in relation to offerings for sale of jackets. The website appears to present online shopping cart facilities. An attempt to retrieve the url “http:// doudouneblousondolcegabbana.com” on April 16, 2013 returned the error “Name Error: The domain name does not exist”.
Besides the WhoIs record of the Disputed Domain Name, no further information about the Respondent is available in this proceeding.
The Complainant contends that:
1) The Disputed Domain Name is identical or confusingly similar to the trademark DOLCE & GABBANA. It is composed of the same root of the trademarks licensed to the Complainant and the Complainant’s website. The added prefix “doudoune blouson” means “padded jacket” in French and does not extenuate the likelihood of confusion with the mark DOLCE & GABBANA;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent was not authorized, licensed or otherwise allowed by the Complainant or the owners of the trademark DOLCE & GABBANA to use the trademark or to register a domain name incorporating the trademark. The Respondent is not commonly known by that name; and
3) The Disputed Domain Name was registered and is being used in bad faith. The trademark DOLCE & GABBANA is well-known. The Respondent knew or should have known of the trademark prior to registering the Disputed Domain Name. There is no evidence of any reasonable efforts by the Respondent to find out about third party rights in the Disputed Domain Name. Registration of the Disputed Domain Name prevents the Complainant from reflecting their mark in a corresponding domain name. The Respondent is not offering a bona fide offering of goods or services with the Disputed Domain Name. The Respondent has intentionally attempted to attract for commercial gain, Internet users to its website 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 products on the website. The products offered on the website resolved from the Disputed Domain Name offered counterfeit products under the trademark DOLCE & GABBANA for sale.
The Respondent did not reply to the Complainant’s contentions.
The default language of the proceeding is Chinese as the registration agreement of the Disputed Domain Name is in the Chinese language. The Complainant has requested that English (or alternatively French) be adopted as the language of the proceeding instead. Having considered the circumstances and the Complainant’s submissions, the Panel determines that English be adopted as the language of the proceeding for the following reasons:
1) The website resolved from the Disputed Domain Name was entirely in French and has no content which corresponded to the default language of the proceeding.
2) The Complainant is an Italian corporation and the Complainant’s authorized representative is also Italian. The Complaint has been submitted in English.
3) Although the Complainant did not specifically say so, it would appear to the Panel from the submissions of the Complaint that the Complainant is not conversant in Chinese and that the Complainant would feel unfairly burdened if Chinese were to be maintained as the language of the proceeding.
4) The Respondent has not filed any response or commented on the language of the proceeding.
5) Requiring the Complainant to submit a Chinese translation of the Complaint would lead to unnecessary delay to the proceedings and potentially increase the Complainant’s cost of the proceeding.
To succeed in this proceeding, the Complainant must show that the three limbs of paragraph 4a) of the Policy are established on the facts, namely:
1) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant’s trademark rights are properly evidenced by the trademark registrations in the mark DOLCE & GABBANA and the exclusive licence granted to them by the trademark owners. The ampersand sign “&” is not a valid character in a domain name and registrants, in registering a sign comprising an ampersand as a domain name will typically either omit it or spell it out as “and”. The omission of an ampersand or its conversion to the word “and” in a domain name should not normally result in a sign which is distinguishable from the original. In the present case, the Panel is of the view that the mark DOLCE & GABBANA remains readily recognizable and distinctive in the Disputed Domain Name. The only other difference between the Disputed Domain Name and the mark DOLCE & GABBANA is the addition of the prefix “doudouneblouson”. The Panel agrees with the Complainant that the prefix “doudouneblouson”, which means “padded jacket” are merely words descriptive of the goods associated with the mark DOLCE & GABBANA and do not serve to distinguish the Disputed Domain Name from the mark DOLCE & GABBANA. Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the mark DOLCE & GABBANA and the first limb of paragraph 4(a) is established.
The Complainant has confirmed that the Respondent is not authorized, licensed or otherwise allowed by the Complainant or the owner of the trademark DOLCE & GABBANA to use the trademark DOLCE & GABBANA or to register a domain name incorporating the same. There is no evidence to indicate that the Respondent is commonly known by the Disputed Domain Name. There is also no evidence before the Panel to suggest that such use of the Disputed Domain Name is a legitimate noncommercial use. On the other hand, it is evident from the content of the website resolved from the Disputed Domain Name that the Respondent was using the trademark DOLCE & GABBANA and associating the same with goods (i.e., jackets) it was offering for sale on the website. In the circumstances, the Panel is of the view that the evidence before the Panel establishes a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. In view of the absence of a Response, the Respondent has failed to rebut the prima facie case and the Panel goes on to hold that the second limb of paragraph 4(a) is also established.
Based on the evidence submitted, the Panel accepts that the trademark DOLCE & GABBANA is a well-known mark. It is inconceivable that the Respondent was unaware of the trademark DOLCE & GABBANA. The content of the website resolved from the Disputed Domain Name contradicted any assumption otherwise. The website clearly exhibited the Respondent’s familiarity and knowledge of the DOLCE & GABBANA trademark and its associated goods. The website was obviously intended for commercial gain with its shopping cart facilities and extensive listing of prices associated with goods under the trademark DOLCE & GABBANA and under other trademarks. The Panel is convinced that the Respondent by using the Disputed Domain Name, had intentionally attempted to attract, for commercial gain, Internet users to the website resolved therefrom by creating a likelihood of confusion with the Complainant's DOLCE & GABBANA trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products on the website. Such a circumstance falls squarely within the situation of bad faith outlined in paragraph 4(b)(iv) of the Policy. The Panel therefore holds accordingly that the third limb of paragraph 4(a) is established.
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, <doudouneblousondolcegabbana.com>, be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: June 25, 2013