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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dolce & Gabbana S.p.A. v. Victory
Case No. D 2001-1174
1. The Parties
The Complainant is Dolce & Gabbana S.p.A., Via S. Cecilia n. 5, 20122 Milano, Italy.
The Respondent is Victory, Via Capelli n. 28, Lugano, TI 6900, Switzerland.
2. The Domain Name and Registrar
The Domain Name is <dolcegabbana.com>.
The Registrar is Network Solutions, Inc.
3. Procedural History
The Complaint was received by WIPO by email on September 25, 2001, and in hardcopy form on September 27, 2001. By email on October 1, 2001, WIPO requested the Complaint to be amended to reflect the name of the Respondent as it appears on the Registrar’s records. The Amendment to Complaint was received by WIPO by email on October 1, 2001, and in hard copy form on October 3, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). Network Solutions, Inc., has confirmed that <dolcegabbana.com> ("the Domain Name") was registered through Network Solutions, Inc., and that Victory ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On October 5, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was October 25, 2001. No Response was received. WIPO issued a Notification of Respondent Default on October 26, 2001.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is, December 19, 2001.
4. Factual Background
The Complainant is the internationally known fashion company named after its owners, the designers Dominique Dolce and Stefano Gabbana. The Complainant has been manufacturing and marketing luxury goods under the name DOLCE & GABBANA since at least 1982. In consequence it has built up a considerable reputation and goodwill under that name sufficient to give it unregistered trademark rights in the name.
The Complainant and its owners are the proprietors of a large number of trademark registrations for the name DOLCE & GABBANA in over 90 countries around the world. Those registrations include, for example International Registration number 498057 dated October 4, 1985.
The Respondent is a Swiss company which registered the Domain Name in 1996. In the same month the Respondent registered a number of other domain names featuring the trademarks of other famous European companies, including <caixa.com> (June 17, 1996), <cassina.com> (June 28, 1996), <christianlacroix.com> (June 19, 1996).
On September 9, 1996, the Complainant’s lawyer in Lugano wrote to the Respondent informing the Respondent of the Complainant’s rights and requesting that the Respondent cease use of the Domain Name.
On October 21, 1996, the Respondent’s legal representative replied, offering to transfer the Domain Name to the Complainant for a price in excess of US$9,000. That letter enclosed a letter dated October 11, 1996, from a Mr Runda of Bureau D’Esprit of Tortola, British Virgin Islands. That letter indicated that Bureau D’Esprit was the owner of the Domain Name and that it was the proprietor of a trademark registration (dated June 28, 1996) for DOLCE GABBANA in Tunisia in Class 38 for telecommunications. The letter went on to say that in English "dolce gabbana" means "sweet overcoat" and that Bureau D’Esprit intended to publish on the Internet later that year a music product under or by reference to the name "dolce gabbana".
On August 31, 2001, the Complainant’s web advisor sent an email and telefax to the Respondent seeking cancellation of the Domain Name on the ground that the Respondent had never used it.
On September 7, 2001, the Respondent’s representative asserted that the Domain Name had been regularly registered in 1996 and had been in use ever since as an internet address. The letter went on to refer to the Tunisian trademark registration and the proposal made in 1996, but questioned whether it would now be possible to effect transfer of the Domain Name.
On September 20, 2001, the Complainant wrote to the Respondent indicating that it proposed to commence civil proceedings.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its trademark DOLCE & GABBANA.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It points to the fact that the Complainant’s name, Dolce & Gabbana, is a name unique to the Complainant which was first adopted in 1982. It contends that the Tunisian trademark registration which was not made until 1996 was a sham and in any event was not registered in the name of the Respondent, but in the name of Bureau D’Esprit SA of Tortola, British Virgin Islands. The Complainant has made enquiries and is not aware of any use having been made by either the Respondent or Bureau D’Esprit SA of the trademark DOLCE GABBANA. The Complainant asserts that it has no trade relationship with the Respondent or Bureau D’Esprit SA.
The Complainant further asserts that the Domain Name was registered in bad faith and is being used in bad faith. The Complainant points in support of that contention to the fact that on or around the date of registration of the Domain Name, the Respondent registered a large number of other domain names featuring famous trademarks of European companies, none of which appear to have any connection with the Respondent.
The Complainant also points to the fact that, when the issue was first raised (and indeed when subsequently revived) with the Respondent, the Respondent’s representative indicated that the Respondent would be prepared to transfer the Domain Name at a price of in excess of US$9,000, which of course was a sum well in excess of the Respondent’s out of pocket expenses.
The Respondent has not Responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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.
Where a Respondent, who has been properly notified of the Complaint, fails to respond, the Panel is entitled to draw such inferences as it considers appropriate (Rules, Paragraph 14(b)). However, the facts speak for themselves and it is unnecessary in this case for the Panel to draw any specific inferences, save that where there is doubt, the Panel will resolve the doubt in favour of the Complainant.
Identical or Confusingly Similar
While most of the trademark registrations referred to in the Complaint appear to be owned by the owners of the Complainant rather than the Complainant itself, two of those registrations at least are in the name of the Complainant and, without doubt, the Complainant has unregistered trademark rights in the name, DOLCE & GABBANA.
The Panel finds that the Complainant has trademark rights in the name DOLCE & GABBANA and that given the fact that ampersands are not possible as constituents of domain names, the Domain Name is in substance identical to a trademark in which the Complainant has rights.
Respondent’s Rights or Legitimate Interests
The Panel is of the view that the Complainant’s trademark is unique to the Complainant and its owners. It is a trademark which is world famous in the field of fashion.
Manifestly the Domain Name is not the name of the Respondent nor does it appear to have been used in any way by the Respondent. Moreover, the Panel accepts the Complainant’s assertion that it has no relationship with the Respondent.
In those circumstances, the Panel finds that the Complainant has made out a prima facie case against the Respondent under this head. In other words the Respondent has a case to answer.
Paragraph 4(c) of the Policy, which is directed to Respondents, indicates how a Respondent may show that it has rights or legitimate interests in respect of a domain name. That paragraph comprises a non-exhaustive list. While the obligation is on the Complainant to prove the elements of paragraph 4(a) of the Policy in order to succeed in a Complaint, once the Complainant has succeeded in making out a prima facie case under paragraph 4(a)(ii) of the Policy, the Respondent is obliged to respond.
The Respondent has not responded. The Panel can think of no reason why the Respondent could reasonably be said to have any rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(b) of the Policy comprises a non-exhaustive list of circumstances any of which, if found by the Panel to be present, shall constitute evidence of bad faith registration and use of the Domain Name.
Paragraph 4(b) insofar as it appears to the Panel to be relevant here reads as follows:-
"For the purposes of paragraph 4(a)(iii) 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 you have registered … the domain name primarily for the purpose of selling … the domain name registration to the Complainant …. for a valuable consideration in excess of your documented out of pocket costs directly related to the domain name; …"
The Panel cannot be certain precisely why the Respondent registered the Domain Name. It is a domain name, which is exclusively referable to the Complainant, and the Respondent has no obvious legitimate reason for having registered it. The Panel notes that in June 1996, the Respondent registered a number of other domain names featuring the famous trademarks of others. The Panel further notes that shortly after registration of the Domain Name the Respondent was prepared to demand a sum of money for transfer of the Domain Name well in excess of his out-of-pocket costs.
The Complainant has set out its allegations clearly and those allegations appear to the Panel to be borne out on the facts of the case.
The Respondent has been given a fair opportunity to respond to the contentions of the Complainant but has elected not to take up that opportunity.
The Panel finds that the overwhelming probability is that the Respondent registered the Domain Name with a view to extorting a large sum of money from the Complainant.
In the circumstances the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(b)(i) and 4(a)(iii) of the Policy.
The Panel finds that in light of the foregoing findings, namely that the Domain Name is in substance identical to a trademark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Name, <dolcegabbana.com>, be transferred to the Complainant.
Professor Francois Dessemontet
Dated: December 11, 2001