trademark registered with the USPTO under number 1370214 on November 12, 1984 in class 25;The Complainant is Sportswear Company S.P.A. of Ravarino, Italy, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Tang Hong of Beijing, China.
The disputed domain name <stoneislandhome.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2014. On October 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 25, 2014, 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.
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 October 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2014.
The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on November 27, 2014. 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.
4.1. Sportswear Company S.P.A., the Complainant in the present proceeding is a clothing manufacturer.
4.2. The Complainant is the right holder of the following trademarks in connection with its business:
- STONE ISLAND, verbal trademark registered with the United States Patent and Trademark Office (the “USPTO”) under number 2706733 on April 15, 2003 in class 25;
- trademark registered with the USPTO under number 1370214 on November 12, 1984 in class 25;
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international trademark registered with WIPO under number 899955 on June 1, 2006 in classes 9, 18, 24, 25, 35;
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trademark registered with the USPTO under number 3707866 on November 10, 2009 in class 25.
4.3. The Complainant’s STONE ISLAND trademark is well-known all over the world, as shown by the results on search engines such as Google and numerous references in press articles and on fashion blogs. The Complainant actively promotes its STONE ISLAND trademark through its website linked to the domain name <stoneisland.com>.
4.4. The Complainant has become aware of the registration and use of the Disputed Domain Name <stoneislandhome.com>. The Disputed Domain Name <stoneislandhome.com> was registered on January 10, 2014 through GoDaddy LLC.
4.5. The Complainant alleges the Respondent uses the Disputed Domain Name to sell counterfeit goods under the Complainant’s brand.
5.1. The Complainant asserts that the Complaint is based on the STONE ISLAND trademark, registered in numerous countries in classes 3, 14, 18 and 25, and used in relation to the Complainant’s clothing manufacturing business.
5.2. The Complainant states that it has continuously used its trademark since 1981.
5.3. Moreover the Complainant contends that it uses the STONE ISLAND trademark in its external communication and branding on its company websites, accessible through <stoneisland.com>, on the products it sells and on billboards and advertisements.
5.4. Finally, the Complainant asserts that the Disputed Domain Name is used to host a website copying the exact figurative trademark of the Complainant and containing an online store selling counterfeit goods based on the Complainant’s products.
The Respondent did not reply to the Complainant’s contentions.
6.1. Paragraph 4(a) of the Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark proves each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the registrant 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.
6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect of each of these elements.
6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”.
6.4. The Complainant has exclusive rights in the trademark STONE ISLAND and has provided evidence of this fact.
6.5. The Disputed Domain Name <stoneislandhome.com> incorporates the Complainant’s STONE ISLAND trademark in its entirety and adds the dictionary term “home”. Previous UDRP Panels have held that “where a domain name incorporates Complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy.” See Kabushiki Kaisha Hitachi Seisakusho v. Arthur Wrangle, WIPO Case No. D2005-1105. In this case, the Panel finds that the addition of generic or descriptive terms does nothing to detract from the distinctiveness of the STONE ISLAND mark. The first element of the Policy, therefore, has been met.
6.6. A first indication that the Respondent has no rights or legitimate interests in the Disputed Domain Name is the fact that the Respondent is not commonly known by the Disputed Domain Name. In the instant case, the WhoIs record indicates that the Respondent is named “Tang Hong”, which does not appear to have any connection with “Stone Island Home”. Consequently the Respondent is not commonly known by the Disputed Domain Name.
6.7. The Respondent has failed to rebut the Complainant’s arguments and to provide evidence of its rights or legitimate interests in the Disputed Domain Name, as demonstrated by the Respondent’s default.
6.8. The Complainant states that the Respondent has no license or authorization and has not been granted permission to use the STONE ISLAND mark, and there is no evidence to the contrary. Considering that the Complainant’s mark has achieved worldwide notoriety, it is highly unlikely that the Respondent chose the Disputed Domain Name by chance.
6.9. Furthermore, the Respondent has not acquired trademark or service mark rights and the Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed. See LEGO Juris A/S v. DomainPark Ltd, WIPO Case No. D2010-0138). While the Panel notes that the terms “stone,” “island,” and “home” have dictionary meanings, the website at the Disputed Domain Name does not provide information related to any such dictionary meaning, but rather resolves to an online store selling what appear to be counterfeit products (as described below).
6.10. In this scenario, the Disputed Domain Name is used to host a website copying the exact figurative trademark of the Complainant and containing an online store selling what appear to becounterfeit goods based on the Complainant’s products. It goes without saying that such use does not constitute a legitimate or fair use according to the policy.
6.11. Therefore, for all the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
6.12. Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:”
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or
(ii) that 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) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 web site or location.
6.13. The content provided on the website linked to the Disputed Domain Name refers to the Complainant’s business. The website uses pictures taken from of the Complainant’s website and even copies some sections of the Complainant’s website.
6.14. A simple trademark search at the time of the registration of the Disputed Domain Name would have revealed the Complainant’s trademark registrations. Also a simple search on the Internet would have revealed the Complainant’s presence and trademarks. As a result, and noting also the use of the website, the Respondent could not reasonably have been unaware of the Complainant’s STONE ISLAND trademark at the time of registration.
6.15. Therefore, the Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website. Indeed, this conduct additionally confirms that the Respondent has used the domain name in bad faith. Thus, the Panel finds that the Complainant has presented evidence to satisfy its burden of proof as to whether the Respondent has registered and is using the Disputed Domain Name in bad faith.
6.16. Finally the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <stoneislandhome.com> be transferred to the Complainant.
José Pio Tamassia Santos
Sole Panelist
Date: December 10, 2014.