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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fendi Adele S.r.l. v. Mark O’Flynn
Case No. D2000-1226
1. The Parties
Complainant is Fendi Adele S.r.l. Rome, Italy ("Complainant"). Respondent is Mr. Mark O’Flynn, Grottaferrata, Rome, Italy ("Respondent").
2. The Domain Name and Registrar
The domain name at issue in this Complaint is "fendiboutique.com".
The Registrar is Network Solutions, Inc. The remedy sought by Complainant is the transfer of the domain name "fendiboutique.com" to Complainant.
3. Procedural History
On September 15, 2000, (by e-mail) and September 19, 2000, (in hard copy), Complainant submitted to the WIPO Center a Complaint under the Uniform Domain Name Dispute Resolution Policy and the Uniform Rules. The Panel agrees that payment was properly made, that the Center rightly assessed the Complaint’s compliance with the formal requirements; that Complaint was properly notified in accordance with paragraph 2 (a) of the Rules. On October 25, 2000, Respondent was declared in default. The Panel agrees that it was properly constituted and that Panelist submitted a Statement of Acceptance and Declaration of Impartiality. The Panel also acknowledges that no other proceedings are pending before any Court of Justice.
4. Factual Background
Complainant is the owner of the trademark FENDI, registered in a number of countries for several fashion products. That FENDI is a famous trademark in the field of fashion is beyond dispute.
Respondent, Mr. Mark O’Flynn of Grottaferrata (Rome, Italy), has registered his domain name "fendiboutique.com", without dispute, well after trademark rights from the name FENDI were acquired by Complainant, and has no known connection with any activity or trade carried out under the trade name or trademark FENDI or FENDI BOUTIQUE. Complainant’s counsel wrote a letter of demand to Respondent on February 18, 2000. Respondent delegated a company called PGC S.r.l. to deal with the sale of the domain name, and that company offered it to Complainant for Lira 12 millions (approximately U.S. $ 5,800). The site "www.fendiboutique.com" appears as "under construction" on the Web. Respondent also owns other domain names including famous fashion trademarks and the word BOUTIQUE (gucciboutique.com, armaniboutique.com, pradaboutique.com and others).
5. Parties’ Contentions
a. Complainant claims that it is owner of the well known and largely used FENDI trademark for a number of different products.
b. Complainant claims that the domain name "fendiboutique.com" has been registered by Respondent in bad faith. Respondent could not ignore Complainant’s trademark rights, nor has Respondent any rights or legitimate interests in respect of the domain name.
c. Complainant claims that the domain name "fendiboutique.com" has been, or is being used by Respondent in bad faith.
a. Respondent is in default and, accordingly, has not challenged the conclusions of Complainant.
6. Discussion and Findings
A. General Principles
Under paragraph 4 (a) of the Policy, the Panel should be satisfied that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered in bad faith;
(iv) the domain name is being used in bad faith.
B. Confusion with Complainant’s Trademark
The Panel finds that Complainant has established that it is the owner of the trademark FENDI for several different products. The validity of its trademarks is beyond dispute. Respondent’s domain name combines two words: "FENDI" and "BOUTIQUE". The combination, if anything, enhances the likelihood of confusion with the trademark FENDI as used for fashion products typically sold in "boutiques", and evidences the bad faith of Respondent, who obviously tries (or threatens to try) to pass himself off as a legitimate source for FENDI products.
C. Respondent’s Absence of Rights or Legitimate Interests in the Domain Name
There is no evidence that Respondent has any right or legitimate interest whatsoever in respect of a domain name including the well-known trademark FENDI, or any association between the trademark FENDI and shops or "boutiques". On this point also, Complainant prevails.
D. Registration in Bad Faith
The very choice of an association of the words "FENDI" and "BOUTIQUE" shows that Respondent, when registering the domain name, was perfectly aware that FENDI was a trademark associated with the sale of Complainant’s fashion products in specialty stores usually called "boutiques" also in languages other than French. Respondent additionally is located in Italy where FENDI is a household name, well-known also to those not particularly interested in fashion. The Panel concludes that the domain name has been registered in bad faith.
E. Use in Bad Faith
Complainant states that the domain name is being used in bad faith. The only Web presence of Respondent under the domain name is a page "under construction". Less than this has been regarded as "use" under the Policy, and the Panel inclines to conclude that operating a page under construction is a form of "use". On the other hand, an in-depth analysis of the above question is not even necessary in this case. "Use", under the Policy, in fact, is not necessarily use on the Web. Starting from the very first WIPO decision under the Policy (World Wrestling Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001), it has been consistently found that an offer to sell the domain name "for valuable consideration in excess of the documented out-off pocket costs directly related to the domain name" under Paragraph 4 (b) (i) of the Policy is in itself evidence of "use in bad faith" even when there is no use whatsoever on the Internet. Under Paragraph 4 (b) there are also a number of other relevant "patterns of conduct" by a Respondent that may be relevant, and these include here attempts of selling the domain name through a third party, and the fact that Respondent has also registered domain names including a number of other famous fashion trademarks.
The Panel concludes that the domain name "fendiboutique.com" is used by Respondent, and is used in bad faith.
Pursuant to Paragraph 4 (i) of the Policy and Rule 15 of the Uniform Rules, this Panel orders that the domain name "fendiboutique.com" be transferred to Complainant.
Dr. Massimo Introvigne
Dated: November 13, 2000