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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bettina Liano and Bettina Liano Pty Limited v. Khanh Kim Huynh
Case No D2000-0891
1. The parties
1.1 The Complainants are Bettina Liano of Suite 1, 30 Cremorne Street, Richmond, Victoria 3121, Australia and Bettina Liano Pty Limited, an Australian Corporation also of Suite 1, 30 Cremorne Street, Richmond, Victoria 3121, Australia.
1.2 The Respondent is Khanh Kim Huynh of 16 Nicholason Street, Melbourne, Victoria 3011, Australia.
2. The domain name and registrar
The domain name upon which this complaint is based is "bettinaliano.com". The registrar of the domain name as at the date of the complaint is Register.com Inc.
3. Procedural history
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, ("the Policy") in accordance with the Rules for Uniform Domain Dispute Resolution Policy, also approved by ICANN on October 24, 1999, ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as at December 1, 1999, ("the Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in hard copy on July 28, 2000, and in electronic format on August 14, 2000. The cover letter to the Complaint dated July 24, 2000, stated that the fees had been paid that day by wire transfer to WIPO’s account. The Complaint stated that the Complainant’s representative, Sebastian Hughes, had endeavored to make contact with the Respondent using the address details provided to Register.com Inc. The Complaint states that the Respondent’s address details are incorrect because:
(a) there is no Nicholason Street in the city of Melbourne;
(b) the post code for Melbourne is 3000, whereas the suburb with the 3011 post code is Footscray; and
(c) there is no Nicholason Street in the suburb of Footscray.
The Complaint states that, on April 14, 2000, Mr. Hughes of the Complainants’ law firm rang the telephone number of a Mr. Huynh who lives at 28 Raleigh Street, Footscray 3011, having made a number of enquiries through the Australian White Pages and Telstra Phone Listing Services. Mr. Hughes spoke to the daughter of Mr. Huynh and was informed that Mr. Huynh did not speak English. Mr. Hughes was given a facsimile number by the daughter and a letter was sent by facsimile to the facsimile number Mr. Hughes was given. The same letter was sent by mail to the 16 Nicholason Street address and the 28 Raleigh Street address. The same letter was also sent to the email address given as the Respondent’s at Register.com Inc, firstname.lastname@example.org.
3.3 The Complaint itself and a second letter from the Complainant’s representative to the Center dated July 24, 2000, stated that a copy of the Complaint had been served on the Respondent by post addressed to 28 Raleigh Street, Footscray, Victoria 3011, by post addressed to 16 Nicholason Street, Footscray, Victoria 3011 and by email to the Respondent’s email address provided to Register.com Inc - email@example.com. This cover letter stated that an attempt was also made to serve the Complaint by facsimile to the Respondent’s nominated facsimile number, but this number was incorrect.
3.4 The Center sent the Complainants an Acknowledgment of Receipt of Complaint on August 8, 2000. The Complainants provided the Center with the requested copy of the Complaint in electronic format on August 14, 2000.
3.5 The Center sent a Request for Registrar Verification to Register.com Inc. on August 8, 2000, and again on September 13, 2000. Register.com Inc. responded to the Center’s request by facsimile on August 14, 2000, and again on September 13, 2000, verifying:
(a) that a copy of the Complaint in respect of the disputed domain name was sent to Register.com Inc. by the Complainant;
(b) that Register.com Inc. was the Registrar for the disputed domain name;
(c) that the Respondent was the current registrant of the disputed domain name [strictly speaking the registrant is shown in the whois database as "khanhkimhuynh khanh huynh" - a set of three lower case words the second and third of which appear on the line following the first word. In the Panel’s view nothing turns on this discrepancy];
(d) the Respondent’s contact details;
(e) that the Policy was applicable in relation to the disputed domain name; and
(f) that "bettinaliano.com" had an "active" status.
3.6 The Center sent a Notification of Complaint and commencement of administrative proceeding on September 14, 2000, to the email address of the Respondent’s administrative contact (khanhkimhuynh/ khanh huynh) as advised by Register.com Inc. in its Verification Response - firstname.lastname@example.org as well as to email@example.com. The Notification was copied to Register.com Inc., which is the listed Technical and Zone Contact and which had previously confirmed having received a copy of the Complaint from the Complainant. Hard copy documents were also dispatched to the Respondent at both the 28 Raleigh Street and 16 Nicholason Street addresses by Swisspost TNT couriers. The Center also attempted three times on September 14, 2000, to notify the Respondent by facsimile transmission. However, it is clear from the "RAPPORT D’ERREUR TX’ documents furnished to the Panel that none of these facsimile transmissions was successfully transmitted. The email to firstname.lastname@example.org was returned with a 550 error message (‘host unknown’). The Notification of Complaint and commencement of administrative proceeding was also sent to the Complainants by email.
3.7 Accordingly, the Panel is satisfied that the Center has complied with sub-paragraphs 2(a)(i) to (iii) of the Rules. Thus, the Center has discharged its responsibility to notify the Respondent. For the record, the Panel adds here the following factual observations.
3.8 The Panel has been furnished with receipts from Swisspost TNT couriers evidencing the dispatch of parcels containing the Notifications sent to the two possible addresses of the Respondent. No receipts evidencing delivery have been provided to the Panel, but the Panel has not been informed of any non-delivery advice having been received from Swisspost TNT couriers, as is customary if it had been impossible to effect delivery to either of the addresses. Nor is there any evidence that the September 14, 2000, email to email@example.com was not successfully delivered. As noted above, it was the email to firstname.lastname@example.org that was returned with a ‘host unknown’ error message. As at October 23, 2000, during the completion of this decision, the Panel observes that Register.com Inc.’s whois database still shows as current one of the two street addresses to which the Center dispatched hard copy packages of material to the Respondent on September 14, 2000, and the email address to which emails to the Administrative Contact for the disputed domain name were sent.
3.9 The Panel finds that the Respondent and its Administrative Contact received actual notice of the Complaint and of the commencement of this proceeding by email on or about September 15, 2000, (Australian time), and that it is likely that hard copies of the Notification and accompanying papers were successfully delivered by Swisspost TNT couriers on or about September 20, 2000.
3.10 The Center sent a Notification of Respondent Default to the Respondent and the Complainants by email to email@example.com on October 7, 2000. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its Response in the domain name dispute. Although the Notification made specific reference to the 20 calendar day period within which the Respondent was entitled to submit a response to the Complaint, no response has been received from the Respondent at any time prior to the Panel commencing its deliberations.
3.11 The Panel has been very concerned to ensure that the requirement of paragraph 10 of the Rules, that each party be given a fair opportunity to present its case, is met in substance. The Panel is of the view that nothing in the procedural history of this case is likely to have deprived the Respondent of an opportunity to communicate with the Center if it so wished prior to the Panel commencing its deliberations.
3.12 The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainants by email on October 11, 2000.
3.13 The Center sent a Transmission of Case File to the Panel by email and by facsimile on October 11, 2000, (Geneva time). These did not include the delivery documentation to which the Panel has paid close attention. Such documentation was included in the hard copy Case File received by the Panel in the afternoon of October 16, 2000, in Sydney, Australia.
3.14 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainants
The following information was asserted as fact in the Complaint and remains uncontested.
Bettina Liano is one of Australia’s leading fashion designers and has traded under the name Bettina Liano since 1985. Her designs are regularly shown at international fashion shows throughout Australia and she has developed a reputation in Australia and throughout the world.
4.2 The Complainants’ TradeMarks
The Complainants’ are the registered owners of two Australian TradeMarks for the words and logo Bettina Liano ("the Marks"). The first (Trade Mark No 613098) is registered by Bettina Liano in Class 25 with the goods described as "clothing", whilst the second (Trade Mark No 716147) is registered by Bettina Liano Pty Limited in Class 25 with the goods described as "clothing, footwear and headgear". Bettina Liano Pty Limited is also the applicant for registration of a TradeMark for the words and logo Bettina Liano in the United States of America. The evidence shows that the Marks were registered from October 6, 1993, and August 29, 1996, respectively and remain current.
5. The Complainants’ Contentions
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element described in paragraph 4(a)(i) of the Policy, the Complaint asserts that the disputed domain name is identical to the Marks. The Complaint asserts that Australians and people from other countries would expect the disputed domain name to be owned by the Complainants.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complaint submits that the words "Bettina" and "Liano" are not words in the English language, and any registration of a domain name featuring those words must constitute a passing off of the Complainants’ reputation.
5.4 In reference to the element described in paragraph 4(a)(iii) of the Policy, the Complaint asserts that the disputed domain name should be considered to have been registered in bad faith for the following reasons:
(i) there is no association, relationship, sponsorship, or connection between the Respondent and the Complainants;
(ii) the address given by the Respondent was false, and it was therefore impossible for the Complainants to contact the Respondent and attempt to negotiate a settlement. Furthermore, the person who has been identified as possibly being the Respondent has not responded to the Complainants’ attempts to contact him; and
(iii) such bad faith would be further evidenced by any attempt by the Respondent to trade using the disputed domain name, or any attempt to sell the disputed domain name to the Complainants or to the highest bidder.
5.5 The Complaint submits that Bettina Liano and Bettina Liano Pty Limited rely on the Marks for their reputation and for recognition throughout the fashion industry by their customers, and the registration of the disputed domain name by the Respondent constitutes:
(i) passing off of the Complainants’ reputation;
(ii) misleading and deceptive conduct in breach of section 52 of the Trade Practices Act 1974 (Cth.); and
(iii) the making of false representations that the disputed domain name has the sponsorship or approval of the Complainants, when it does not have, in breach of section 53 of the Trade Practices Act 1974 (Cth.).
5.6 The Complaint dismisses the possibility that there could be some reason apart from those described above for the registration by the Respondent of the disputed domain name. It is submitted in the Complaint that the Respondent was in no way ignorant of the Complainants’ goodwill in the Marks and registered the domain name "bettinaliano.com" for the purposes of cashing in on this goodwill in some way, either by trading or by attempting to sell the disputed domain name to the Complainants or to the highest bidder.
6 Discussion and Panel Findings
6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. As noted in section 3 of this decision, no response to the Complaint, nor any other communication from the Complainants’ representative or the Center, has been received from the Respondent since the filing of the Complaint. As a result, all assertions in the Complaint are uncontested. Under paragraph 5(e) of the Rules, the Panel is therefore required to decide the dispute based on the Complaint. Nevertheless, the Panel is of the view that, particularly where the Respondent has not provided a response, it needs to be independently satisfied that the three elements set out in paragraph 4(a) of the Policy have been made out on the evidence available to the Panel. This also follows from the concluding words to paragraph 4(a) of the Policy.
6.2 Domain name identical or confusingly similar to the Complainants’ Marks
The domain name in dispute is "bettinaliano.com". The Complainants’ TradeMarks are the words Bettina Liano in one case accompanied by graphic matter to form a device mark. To the extent to which there are differences between the Complainants’ TradeMarks and the domain name in dispute, such as the space between words in the word mark, and the gTLD suffix forming part of the domain name, the Panel finds confusing similarity proven, and also finds that the differences are sufficiently immaterial that identity is also proven. It is clear that the domain name in dispute solely comprises words, which are identical to the Second Complainant’s word mark with no relevant distinguishing matter.
6.3 Respondent has no rights or legitimate interests in the domain name
The Respondent has asserted no rights or legitimate interests in the disputed domain name, and the Panel cannot presently conceive of any legally sound basis on which any such assertion might be made. Certainly there is no evidence whatsoever before the Panel that any of the situations described in paragraph 4(c) of the Policy apply in the case of the Respondent. The Panel notes that "Bettina Liano" is the actual name of both Complainants (but for the addition of "Pty Limited" in the case of one of the Complainants). This is of additional significance given the fact that the Complainants trade in the fashion industry, in which names and consumer recognition are very important. By contrast, the words "Bettina Liano" bear no resemblance to any known name or business of the Respondent. The Complainants deny, and there is no evidence to the contrary, that there is any relationship between the Complainants and the Respondent that would give rise to any license, permission or other right by which the Respondent could own or use the domain name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
6.4 Domain name has been registered and is being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:
"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of registration and use of the domain name in bad faith." (emphasis added)
In this case, although the Registrar of the disputed domain name has confirmed that "bettinaliano.com" is "active", currently the web page displays a message from Register.com Inc. that the website was recently registered and is "coming soon". In some cases, however, it has been found that it is unnecessary to consider the two limbs of the provision separately, as the "use" requirement has been found not to require positive action, inaction being within the concept. In particular, it has been held in previous decisions that a Respondent’s passive holding of the domain name in dispute satisfies the requirements of paragraph 4(a)(iii) that the domain name "is being used in bad faith" by the Respondent. For the purposes of this decision, and in the interests of consistency of interpretation of the Policy, the Panel proposes to accept the above interpretation adopted in earlier decisions.
6.5 The Panel has already found that the Respondent does not conduct any legitimate business activity connected to the name of the Complainants. The Panel has noted in section 3 of this Decision that either the Respondent has taken deliberate steps to avoid being contacted by the Center and the Complainants’ representative in relation to the disputed domain name, or has simply chosen not to respond. In the light of the above, and given that the Complainants’ Trade Marks have a reputation and are known in Australia, it seems inherently unlikely to the Panel that the Respondent registered the disputed domain name in good faith.
No attempt has been made by the Respondent to trade using the disputed domain name or to sell the domain name to the Complainant or the highest bidder. Nevertheless, the circumstances listed in paragraph 4(b)(i) to (iv) of the Policy are stated to be without limitation. In this case, the Panel cannot conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name, and the Respondent has provided no evidence of any actual or contemplated good faith use by it of the domain name. For this reason, the Panel infers that the domain name "bettinaliano.com" has been registered and is being used by the Respondent in bad faith.
The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel requires that the domain name "bettinaliano.com" be transferred to the second Complainant, Bettina Liano Pty Limited.
Philip N. Argy
Dated: October 23, 2000