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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Etro S.p.a. v. Messrs. Mark O’Flynn, Luciano Carbonetti PGC s.r.l.
Case No. D2000-1289
1. The Parties
The Complainant is Etro S.p.a., Via Spartaco 3, Milan, Italy.
The Respondents are Mr. Mark O’Flynn, Via di Villa Grazioli 47, Grottaferrata, Rome, Italy and Mr. Luciano Carbonetti, P.C.G. s.r.l. Via Nettunese Km. 6,500, Ariccia, Rome, Italy.
2. The Domain Name and Registrar
The domain name at issue is "etroboutique.com" (Domain Name), which Domain Name is registered with Network Solutions Inc. (NSI or the Registrar).
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), was submitted electronically to the WIPO Arbitration and Mediation Center (the Center) on September 29, 2000. The signed original with attachments was received by the Center on October 2, 2000.
On October 6, 2000, the Center transmitted to NSI a request for Registrar Verification in connection with this case. On October 9, NSI confirmed that: (i) NSI is the Registrar of the Domain Name "etroboutique.com"; (ii) the current registrant of the Domain Name is Mark O’ Flynn, Via di Villa Grazioli 47, Grottaferrata, Rome, Italy; (iii) the administrative and billing contacts are respectively, Mark O’Flynn and Luciano Carbonetti, c/o PCG s.r.l., Via Nettunese Km 6,500 Ariccia, Rome, Italy; and (iv) the domain name registration is in "Active" status.
On October 20, 2000, the Center completed the Formal Requirements Compliance Checklist and on the same date transmitted to the Respondents a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) electronically, by courier and fax. In the Commencement Notification the Center advised, inter alia, the Respondents that a response was due on November 8, 2000. On the same date the Commencement Notification was copied to the Complainant and to ICANN and the Registrar.
Having received no response from the Respondent, on November 10, 2000, the Center transmitted electronically to the Respondents a Notification of Respondent Default, copy to the Complainant.
On November 24, 2000, the Center notified the parties that Ms. Anna Carabelli had been appointed as the Panelist in this proceeding, indicating that, absent exceptional circumstances, the Panelist is required to send its decision to the Center by December 8, 2000.
The Panelist independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant has submitted a computer print out showing all trademark registrations and applications for "Etro" owned by the Complainant (Attachment 3 to the Complaint) and provided evidence (Attachments 4, 5, 6 e 7) of the following trademark registrations that are most relevant to this case, considering that the Respondents are located in Italy:
Community Trademark Reg. No. 552.430, applied for on June 10, 1997, granted on April 20,1999
ETRO and device
Community Trademark Reg. No. 552.356, applied for on June 10, 1999, granted on November 17, 1999
Italian Trademark Reg. No.290221, applied for on May 14, 1975, granted on July 26, 1975
Renewed on May 11, 1995
Italian Trademark Reg. No.336246, applied for on July 13, 1983, granted on November 5, 1983
In addition, the Complainant has submitted a copy of the correspondence between the Complainant’s authorized representative and the Respondents, showing that:
● following the Complainant’s cease and desist letter dated February 8, 2000, (Attachment 8 to the Complaint), Mr. O’Flynn declared to be willing to transfer the Domain Name for the price of 2,500 U.S.$ which was a 10% higher than the price he was offered one year earlier by third parties (Attachment 9 to the Complaint);
● the Complainant did not accept Mr. O’Flynn’s request, considering the registration of the Domain Name as an infringement of its trademark rights, and as a result of the negotiations subsequently started with Mr. O’Flynn the latter finally accepted to transfer the Domain Name upon reimbursement of the out-of-pocket expenses incurred for the registration and the transfer of the Domain Name (Attachment 10 the Complaint);
● few days later, however, Mr. O’Flynn invited the Complainant to contact Mr. Luciano Carbonetti at PCG which, according to Mr. O’Flynn, is the real owner of the Domain Name, and paid all registration costs thereto (Attachment 11 to the Complaint);
● the Complainant then reverted to Mr. O’Flynn to (i) inform him that upon the Complainant’s request, Mr. Carbonetti replied that he was willing to assign the Domain Name upon the payment of 8,000,000 Lira which sum covers the fees due to the Registrar, the advice to Mr. O’Flynn in connection with the Domain Name and the expenses related to 15 days of software work in connection with the website related to the domain name; (ii) point out that Mr. Carbonetti’s requests were inconsistent with Mr. O’Flynn’s previous undertaking to transfer the Domain Name against the reimbursement of the mere out-of-pocket expenses and (iii) invite Mr. O’Flynn to fulfill its commitments (Attachment 12 to the Complaint);
● Mr. O’Flynn then claimed that the Domain Name is not under his control and therefore he could act only upon Mr. Carbonetti’s instructions (Attachment 13 to the Complaint).
The Complainant has also submitted documents indicating that there is no current website available at the Domain Name (Attachment 1 to the Complaint) and that Mr. O’Flynn has registered, and Mr. Carbonetti is a billing contact for, a number of domain names that, as well, are connected to web pages "under construction" (Attachments 15-23 to the Complainant). All these domain names incorporate the names of well-known industries active in the fashion business, to which the word "boutique" is added and were registered in the same period (September- October 1999) as the Domain Name.
5. Parties’ Contentions
The Complaint is brought against both Mr. O’Flynn and Mr. Luciano Carbonetti, P.C.G. s.r.l., based on the allegation made by the former that the "real" owner of the Domain name is the latter (see Attachments 11 and 13 to the Complaint).
The Complainant contends that:
● since 1968 the Complainant is in the fashion business and has greatly expanded its activity by opening a number of Etro boutiques in Italy and abroad. Etro products include house furnishing, various accessories for men and women, pret-а-porter collection and eyewear;
● the Domain Name is made up of "ETRO" which is the Complainant’s trademark and the word "boutique" which is a general term commonly used in connection with fashion products in order to indicate the shop through which the products are commercialized;
● the Respondent’s Domain Name is therefore confusingly similar to the Complainant’s registered trademarks since the word "boutique" is not able to distinguish the domain name from the Complainant’s trademarks being so closely associated with the Complainant’s activity, which fact is acknowledged by Mr. O’Flynn in his e-mail of April 13, 2000, (Attachment 9 to the Complaint);
● the Respondent has no right or legitimate interests in the Domain Name;
● in particular, Respondents are not linked to the Complainant by any license or distribution agreement, nor have been known by the name "etroboutique.com";
● the Domain Name has been registered and is being used in bad faith;
● in particular, evidence of bad faith registration and use can be drawn from the fact that (i) Respondent O’Flynn has registered and Respondent Luciano Carbonetti, P.C.G.is the billing contact for a number of domain names incorporating the names and trademarks of well-known fashion business, which fact suggests that they have no good faith intent to use any of them but to trade on the value of those marks by way of selling the domain names to long-time owners of the marks or by otherwise interfering with the owners’ rights to use their marks in commerce; (ii) Respondent has made no actual good faith use of the Domain Name; (iii) there is no current website available at the Domain Name, only an "under construction" page; (iv) the monetary requests made first by Mr. O’Flynn then by Mr. Carbonetti are in excess of out-of-pocket costs directly connected with the Domain Name, which fact shows that the Domain Name has been registered and used for the purpose of selling it; (v) this is implicitly confirmed by Mr. O’Flynn’s e-mail of April 13, 2000, (Attachment 9 to the Complainant) referring to third parties’ offers for the acquisition of the Domain Name;
● the reasons adduced by Respondent O’Flynn for not transferring the Domain Name are mere pretexts since the Domain Name is registered in his name, therefore he is in the position to dispose of it. This constitutes additional evidence of use in bad faith.
To support its propositions the Complainant cites a number of Panels’ decisions on the matter.
Based on the above, the Complainant requests the transfer of the Domain Name.
Respondents did not file any response and are in default.
6. Discussion and finding
Paragraph 15.a. of the Rules instructs the Administrative Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under Paragraph 4.a of the Policy, the Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent 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.
Paragraph 4.b of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4.a (iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c of the Policy sets out three illustrative circumstances any one of which if proved by respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4.a(ii) above.
(a) Identity or confusing similarity
The Domain Name is a combination of the word "etro" and the word "boutique". "Boutique" is a general term commonly used in order to indicate the shop through which fashion products are commercialized.
The Panelist finds that the Domain Name is confusingly similar to Complainant’s trademarks since the word "boutique" is directly related to the Complainant’s business and therefore the combination with Etro is clearly confusing (Yahoo! Inc. v. Jorge O. Kirovsky WIPO D2000-0428).
(b) Rights or legitimate interests
The Panelist finds that Complainant has established a prima facie evidence that Respondents have no rights or legitimate interest in the Domain Name based on the following circumstances:
(i) Respondents have made no use of the Domain Name since there is no current website available at the Domain Name;
(ii) Respondents do not have any authorization or license to use the Complainant’s trademarks or to incorporate them in the Domain Name nor to distribute Complainant’s products;
(iii) There is no evidence that Respondents are commonly known by the Domain Name.
On the other hand, the Panelist considers that by not submitting a response, Respondents have failed to invoke any circumstance under Paragraph 4.c of the Policy, which can demonstrate any rights or legitimate interests in the Domain Name (Spadel S.A v. Peter Kisters WIPO D2000-0526; Deutsche Bank AG v. Diego-Arturo Bruckner WIPO D2000-0277; Talkcity Inc. v. Robertson WIPO D2000-0009).
Therefore, the Panelist finds that the Respondents have no rights or legitimate interests in the Domain Name.
(c) Bad Faith
Under the Policy, Complainant is required to prove also the third element provided for in paragraph 4.a(iii), namely that the domain name "has been registered and is being used in bad faith".
As demonstrated by the Complainant, at least factor (i) of Paragraph 4.b of the Policy is applicable here and establishes bad faith registration and use of the Domain Name.
The first request made by Mr. O’Flynn and the subsequent request made by Mr. Carbonetti leads to conclude that the Respondents have registered or acquired the Domain Name "primarily for the purpose of selling, renting … the domain name registration to the complainant … for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name".
The Domain Name has either never been used or has been used as matter of negotiation for sale, as is to be inferred from Mr. O’Flynn’s e-mail dated April 13, 2000, (Attachment 9 to the Complaint).
The sums of U.S.$ 2,500 and of 8,000,000 Lira, respectively asked by each of the Respondents clearly are in excess of out-of-pocket expenses directly related to the Domain Name. As regards Mr. Carbonetti’s request for reimbursement of software work allegedly made in connection with the website, the Panelist notices that obviously no reimbursement could be asked to the Complainant since it never asked the Respondents to develop a website software to be used in connection with the Domain Name.
In addition, the Panelist finds that the Respondents’ activity amounts to bad faith registration and use of the Domain Name, also based on the following circumstances:
a) there is no evidence that the Respondents have made actual or contemplated good faith use of the Domain Name;
b) the fact that Respondent O’ Flynn has registered and Respondent Luciano Carbonetti is the billing contact for many domain names in addition to the Domain Name leads to conclude that they have no good faith intent to use any of them;
c) in addition, as in the case of the Domain Name all the above mentioned domain names are a combination of the word "boutique" and famous names and trademarks in the fashion business. The Panel decisions have established that ownership of numerous domain names which are the names or marks of well known business entities suggests the intent to profit from the activity of others (Stella D’Oro Biscuit Co. Inc. v. The Patron Group Inc, WIPO D2000-0012; Nabisco Brands co. V. The Patron Group Inc. WIPO D2000-0032; Parfums Christian Dior V. 1 Network Inc. WIPO D2000-0022; J.P. Morgan v. Resource Marketing WIPO D2000-0035) ;
d) Respondents have no rights or legitimate interests in the Domain Name, as established under paragraph 6b) above and as a consequence, the Respondents could not possibly make any plausible actual or contemplated active use of the Domain Name other than illegitimate.
In his e-mails of May 16, 2000, and July 3, 2000, (Attachments 11 and 13 to the Complaint) Respondent O’Flynn as justification for not transferring the Domain Name states that the "real owner" of the Domain Name is Mr. Carbonetti who controls the Domain Name.
The credible evidence compels the conclusion that this is a mere pretext. The Domain Name is in fact still in the name of Mr. O’Flynn who consequently is in the position to transfer the Domain Name. In addition, in his first e-mail of April 9, 2000, (Attachment 9 to the Complaint) Mr. O’Flynn declared himself available to transfer the Domain Name without raising any objection as to the ownership thereof, and started negotiations with the Complainant. Only later, following the Complainant’s reiterated requests to finalize the transfer, Mr. O’Flynn diverted the Complainant to Mr. Carbonetti (who, in his turn raised the amount of money requested for the transfer). In doing so Respondents prolonged a situation which is prejudicial to the Complainant’s rights. This constitutes further evidence of use in bad faith (Parfums Christian Dior v. 1 Netpower Inc. WIPO D2000-0022).
Therefore, the Panelist concludes that the Domain Name has been registered and used in bad faith.
The Panelist decides that: (a) the domain name "etroboutique.com" is confusingly similar to the Complainant’s registered trademarks; (b) Respondents have no rights or legitimate interests in respect of the domain name "etroboutique.com"; and (c) the domain name "etroboutique.com" has been registered and is being used in bad faith by the Respondents.
Accordingly, the Panelist requires that the domain name "etroboutique.com" be transferred to the Complainant.
Dated: December 6, 2000