Complainant is M.F.H. Fejlesztõ Korlátolt Felelõsségû Tvrsaság of Budapest, Hungary, represented by Novagraaf Nederland B.V., the Netherlands.
Respondent is Dany Daniele of Montagnola, Switzerland.
The disputed domain names <intimissimilingerie.com>, <intimissimilingerie.info>, <intimissimilingerie.net>, <intimissimilingerie.org>, <intimissiminow.com>, <intimissimionline.info>, <intimissimionline.me> and <intimissimi.xyz> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2015. On April 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 10, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
Upon receipt of a copy of the Complaint from Complainant, Respondent apparently agreed to transfer the disputed domain names to Complainant. Complainant was invited to submit, within the next three (3) calendar days, a request for suspension of the proceedings to explore a possible settlement between the parties. No such a request was submitted by Complainant.
Therefore, 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 Respondent of the Complaint, and the proceedings commenced on April 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 18, 2015.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 27, 2015. 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.
The trademark upon which the Complaint is based is intimissimi. According to the documentary evidence and contentions submitted, Complainant owns a number of registrations for the intimissimi trademark for underware and nightware in different countries. Complainant owns the European Community Trademark Registration No. 001978808 dated April 2, 2002, as well as a Canada Trademark Registration No. TMA573828 dated January 16, 2003.
According to the documentary evidence and contentions submitted, the INTIMISSIMI trade name was created in 1986 and became a market leader in underware in Europe. Complainant also contends that its INTISSIMI trademark has acquired extensive goodwill and a substantial reputation throughout the world through a franchise network. In addition, Complainant contends that it has an online presence through various websites and owns different domain names with the element intimissimi, including the domain name <intimissimi.com> which was registered on July 27, 1998.
The disputed domain names <intimissimionline.me>, <intimissimionline.info> and <intimissiminow.com> were registered on October 29, 2014. The disputed domain names <intimissimilingerie.com>, <intimissimilingerie.info>, <intimissimilingerie.net>, <intimissimilingerie.org> and <intimissimi.xyz> were registered on January 16, 2015.
Complainant contends that the disputed domain names are phonetically, visually and conceptually confusingly similar to Complainant’s trademark because (i) all the disputed domain names incorporate the INTIMISSIMI element which is identical to Complainant’s well-known trademark, and the disputed domain name <intimissimi.xyz> is even identical to the INTIMISSIMI trademark; (ii) the addition of the descriptive elements “online”, “now” and “lingerie” does not cause the INTIMISSIMI trademark and the disputed domain names to be sufficiently dissimilar as the INTIMISSIMI trademark is well known for lingerie, beach and fashion which is sold and purchased online; (iii) the creation of the disputed domain names could not serve any legitimate interests and could only aim at exploiting the reputation of Complainant’s trademark.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain names because (i) Respondent does not have any rights to the INTIMISSIMI trademark or trade name and does not have any legitimate interests in that name; (ii) no authorization has been given by Complainant to Respondent to use the INTIMISSIMI trademark and there is no commercial link between Complainant and Respondent; (iii) Respondent is not using the disputed domain names for a legitimate and noncommercial purpose, as the disputed domain names link either to the <queenxenia.uk> or to the <queenxenia.ch> domain names, which display an identical website selling lingerie, fashion and lovetoys; (iv) Respondent appear to have been aware of Complainant and its INTIMISSIMI trademark at the time of registration of the disputed domain names as the disputed domain names are linked to sites which sell lingerie and fashion; (v) Respondent’s purpose in using the disputed domain names is to direct customers looking for INTIMISSIMI products to the <queenxenia.uk> and <queenxenia.ch> websites to sell their lingerie and fashion; and (vi) the use of Complainant’s trademark to offer for sale or to direct customers to the products of Complainant’s competitors amounts to a form of “bait and switch” selling.
Finally, Complainant contends that Respondent registered and uses the disputed domain names in bad faith because (i) Respondent is a competitor of Complainant as Respondent owns the <queenxenia.uk> domain name and appears to be affiliated to the owner of the <queenxenia.ch> domain name; (ii) Respondent registered the disputed domain names primarily for the purpose of attracting consumers to its competing website by using the well-known INTIMISSIMI trademark in the disputed domain names; (iii) Respondent is trying to imitate Complainant with the contents of its website in a manner to mislead consumers; (iv) Respondent intentionally causes initial interest confusion and intentionally attempts to attract consumers to its website for commercial gain; (v) Complainant sent a cease and desist letter to Respondent in January 2015 with respect to the disputed domain names <intimissimionline.me>, <intimissimionline.info> and <intimissiminow.com>, and Respondent’s reply was to solicit an offer for sale; (vi) right after Complainant refused to make such an offer, Respondent registered the disputed domain names <intimissimilingerie.com>, <intimissimilingerie.info>, <intimissimilingerie.net>, <intimissimilingerie.org> and <intimissimi.xyz>.
Respondent did not reply to Complainant’s contentions.
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
The disputed domain names incorporate the INTIMISSIMI trademark in its entirety. Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282. That is particularly true where the registered trademark is well-known, as in the instant case.
As decided in other UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone”. LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., WIPO Case No. D2009-0924. See also Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. In the instant case, the combination of the word “intimissimi” with the descriptive terms “online”, “lingerie” and “now” does not affect the overall impression of the dominant part of the disputed domain name. In fact, the addition of such descriptive terms renders the disputed domain names even more confusingly similar to the INTIMISSIMI registered trademark, particularly because original INTIMISSIMI products are sold and purchased online, and the INTIMISSIMI trademark has been used in connection with lingerie products. The disputed domain name <intimissimi.xyz> is even identical to the INTIMISSIMI trademark.
Finally, the addition of the Top-Level Domain suffixes “.com”, “.info”, “.net”, “org”, “.me” and “.xyz” is non-distinctive because it is required for the registration of the disputed domain names. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540; Sanofi-aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the disputed domain names are at the least clearly confusingly similar to the INTIMISSIMI trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
The consensus view in the URDP panel decisions has been that a complainant is required to make out a prima facie case. Once such a case is made, the respondent carries the burden of demonstrating rights or legitimate interests in a disputed domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 2.0, paragraph 2.1.
The Panel is convinced that Complainant has established a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain names, and Respondent has failed to provide the Panel with any evidence of Respondent’s rights to or legitimate interests therein. In addition, none of the three nonexclusive circumstances for the Panel to conclude that Respondent has rights or a legitimate interest in the disputed domain names (paragraph 4(c) of the Policy) shows a result in favor of Respondent.
In fact, the Panel finds as reasonable Complainant’s contention that Respondent has never been authorized to use Complainant’s INTIMISSIMI trademark. The Panel also agrees that Respondent’s use of the disputed domain names does not satisfy the test for bona fide use established in prior UDRP panel decisions as the disputed domain names are being used to link to a website offering products that are in competition with Complainant’s products.
Therefore, the Panel holds that Respondent has not used the disputed domain names in connection with a bona fide offering of good or services and has not made a legitimate noncommercial or fair use of the disputed domain names. On the contrary, the disputed domain names have been used to offer for sale or to direct customers to the products of Complainant’s competitors, and such practice amounts to a form of “bait and switch” selling. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be an indication of bad faith in itself, even without considering other elements. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of the INTIMISSIMI trademark when Respondent registered the disputed domain names, either on October 29, 2014 when the first three disputed domain names were registered, or on January 16, 2015, after Respondent received a cease and desist letter from Complainant, when the remaining disputed domain names were registered. In addition, the combination of the word “intimissimi”, which is recognized as a well-known trademark, with the descriptive terms “online”, “lingerie” and “now” indicates that Respondent acted with opportunistic bad faith because the disputed domain names clearly refer to the same type of products which are distinguished by the INTIMISSIMI trademark and to the online commercial activities carried out by Complainant.
The Panel has found before, for the purpose of determining whether Respondent lacks rights to or legitimate interests in the disputed domain names, that the disputed domain names have been used to offer for sale or to direct customers to the products of Complainant’s competitors, and that such practice amounts to a form of “bait and switch” selling.
Paragraph 4(b)(iv) of the Policy provides that if, by using a domain name a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith. Finally, the pattern of conduct by Respondent in dealing with Complainant upon receipt of a cease and desist letter does reinforce the finding of opportunistic bad faith.
In short, the manner in which Respondent has used and is using the disputed domain names demonstrates that the disputed domain names are being used in bad faith. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith, and finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 names <intimissimilingerie.com>, <intimissimilingerie.info>, <intimissimilingerie.net>, <intimissimilingerie.org>, <intimissiminow.com>, <intimissimionline.info>, <intimissimionline.me> and <intimissimi.xyz> be transferred to Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Date: June 10, 2015