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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Benetton Group SpA v Domain for Sale

Case No. D2001-1498

 

1. The Parties

Complainant is BENETTON GROUP SpA, a corporation organized under the laws of Italy, having its principal place of business at Ponzano Veneto, Treviso, Villa Minelli, 31050, Italy and represented by Mr. Luca Barbero, ("Complainant").

Respondent is DOMAIN FOR SALE, having its headquarters at 19, Bondarenko Square, Obninsk, Kaluga 249020, Russia ("Respondent").

 

2. The Domain Name and Registrar

The domain name at issue is <benettonsportsystem.com>.

The Registrar is Bulkregister.com Inc., 7 East Baltimore St, Baltimore MD 21202, USA ("the Registrar").

 

3. Procedural History

The complaint was submitted electronically with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on December 27, 2001. The hardcopy under cover of a letter of the same date was received on January 3, 2002, ("the Complaint"). An Acknowledgement of Receipt was sent by the Center to Complainant on December 31, 2001.

On January 3, 2002, a Request for Registrar Verification was transmitted to the Registrar. The Center, having received no reply from the Registrar, resent the Request on January 21, 2002. On January 21, 2002, the Registrar confirmed by e-mail that the domain name <benettonsportsystem.com> is registered with the Registrar and that Respondent is the current registrant of that domain name.

On January 24, 2002, a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") was sent to both parties.

On February 15, 2002, a Notification of Respondent Default was sent to the Respondent.

On March 1, 2002, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist.

 

4. Factual Background

Complainant is the owner of the trademark BENETTON SPORTSYSTEM, registered worldwide for various goods and services, including International registration no. 599101 of December 11, 1992; Italian registration no. 585444 of December 11, 1992; British registration no. 2012817 of March 1, 1985, and US registration no. 2034933 of February 4, 1997.

The domain name <benettonsportsystem.com> was registered on June 15, 2001, by Respondent.

Complainant sent a Cease and Desist Letter to Respondent on October 22, 2001. In this letter Complainant also summoned Respondent to transfer the domain name <benettonsportsystem.com> to Complainant. The Respondent replied per email to this letter on October 25, 2001, with the following text:

"This domain is at USD 450."

 

5. Applicable Rules

Paragraph 4 (a) of the Policy directs that Complainant must prove each of the following:

(i) The domain name in issue is identical or confusingly similar to Complainant's trademark, and

(ii) the Respondent has no rights or legitimate interest 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, by way of example, four circumstances, each of, which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4 (a) (iii) above.

Paragraph 4 (c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interest to the domain name for the purpose of Paragraph 4 (a) (ii) above.

 

6. Parties’ contentions

Complainant

The Complainant has submitted an extensive and amply documented Complaint, which can be summarized as follows.

Benetton was established in 1965. Benetton Sportsystem is one of the companies of the Benetton Group SpA. The Benetton Group is now present in 120 countries around the world. It operates in the clothing sector with the well established "United Colors of Benetton" and "Sisley" brands and in the sportswear and equipment sector through the leading brands "Playlife", "Nordica", "Prince", "Rollerblade" and "Killer Loop". Due to the level of turnover and the extensive presence of the trademark BENETTON in most of the countries in the world, and supported by intensive worldwide advertising campaigns as well as sponsoring activities of international relevance, the trademark BENETTON qualifies as a well-known trademark for the purpose of article 6 bis of the Paris Convention 1883.

Complainant is the registered owner of various trademark registrations of BENETTON SPORTSYSTEM. The domain name <benettonsportsystem.com> is therefore identical to the registered trademark to which Complainant has rights.

Respondent registered the domain name <benettonsportsystem.com> on June 15, 2001, without the authorisation of Complainant. Respondent has indicated that the domain name <benettonsportsystem.com> is for sale. The internet user is invited to submit a monetary offer for the domain name. The website states that:

"Any offer below USD 550 will be ignored! Please submit only serious offers."

As an example of a serious offer USD 3,500 is mentioned.

The domain name <benettonsportsystem.com> is also used by Respondent to actively advertise a number of pornographic websites. Furthermore, when an internet user attempts to leave any advertised website, three or four new browser windows appear automatically featuring further hard-core pornographic sites, thus effectively "mouse-trapping" the unwilling visitor into viewing pornographic content until he is able to close these windows.

As soon as Complainant became aware of such registration and use of the domain name identical to its registered trademark and confusingly similar to the well-known trademark BENETTON, a Cease and Desist Letter was sent dated October 22, 2001, to Respondent. Replying by email, Respondent answered:

"This domain is at USD 450."

This answer is a further confirmation of Respondent’s intention to sell the domain name for valuable consideration in excess of out-of-pocket costs. Searches conducted in search enquiries also highlighted a number of articles dealing with, or mentioning the activities of, Respondent. As reported in these articles, Respondent has adopted for the registration of other domain names "Domain For Sale", "For Sale" and "This Domain is For Sale". Furthermore, the administrative contact is sometimes an anonymous individual. Although an Armenian or Russian address is present in the WHOIS database, the telephone and fax numbers correspond to answering machines in the USA.

Complainant states that from the abovementioned articles it follows that Respondent appears to have launched a campaign of buying up expired domain names. The system compiles lists of domain names of websites which have not been re-registered, checks search engines and does link searches to see how many sites have links to that domain name; when they found that there are numerous such links they then register the domain name themselves, turning it into a re-direct for their porn sites. Re-registering expired domain names, as well as those corresponding to trademarks, allows Respondent to get the benefit of attracting visitors they would, in all likelihood, not get otherwise in an effort to gain new customers who would not ordinarily be exposed to their advertising.

In their reply to Complainant’s Cease and Desist Letter, Respondent did not provide any evidence of its use of, or demonstrable preparations to use, the contested domain name in connection with a bona fide offering of goods or services. Their answer was a simple reiteration of a request for monetary compensation, which emphasizes the bad faith of Respondent and his intention to profit from the sale of the domain name.

Respondent is not a licensee, an authorized agent of Complainant or in any other way authorized to use Complainant’s trademark BENETTON SPORTSYSTEM. In view of Respondent’s use of the domain name in question, Respondent cannot claim, in good faith, to be making a legitimate non-commercial or fair use of the contested domain name, without intent for commercial gain. Respondent offers the domain name for sale, clearing negating the possibility of an intention on the part of Respondent to use the domain name in connection with any bona fide offering of goods and services.

Respondent’s registration of the contested domain name prevents Complainant from reflecting its trademark in a corresponding domain name. Respondent is clearly engaged in a pattern of such conduct.

Complainant also emphasizes that by linking the contested domain name to pornographic websites, Respondent has intentionally attracted internet users for commercial gain and has created a likelihood of confusion with Complainant’s identical trademark as to the source of affiliation of the website.

In the light of the international reputation of the trademark BENETTON, Respondent could not have been unaware of the existence of the trademark registration identical or at least confusingly similar to the contested domain name. This circumstance can be considered as evidence of bad faith at the time of registration.

As Respondent has not submitted a Response to the Center, Complainant’s contentions are uncontested.

 

7. Due process

Where, as in this case, a Respondent does not submit a response and the file does not contain any communication from Respondent, the rules of due process require the Panel to verify as much as possible that Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the file documents, that this is the case.

A hard copy of Complainant was sent by the Center to the address of Respondent mentioned under 1 above by courier and by email (returned as not deliverable) and to the technical and administrative contact by email.

The Panel therefore assumes that Respondent has received these documents, but has chosen not to respond.

 

8. Discussion and Findings

Complainant must provide evidence of all elements of Paragraph 4 (a) of the Policy. Since the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision. The absence of a response from Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.

a. Trademark rights

Complainant has provided sufficient evidence of its rights to the trademark BENETTON SPORTSYSTEM.

b. Identical or confusingly similar

The domain name <benettonsportsystem.com> is identical to Complainant’s trademark BENETTON SPORTSYSTEM. The suffix ".com" indicates that the domain name is registered in the .com gTLD.

c. Rights or legitimate interests

Under paragraph 4 (c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Article 4 (a) (ii), inter alia, by providing evidence of any of the following circumstances:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

There is no prima facie evidence of an own trademark or other right of Respondent in the name BENETTON SPORTSYSTEM. Furthermore, Complainant has not given consent, license or any other authorization to Respondent for use or registration of the domain name.

Respondent’s use of the domain name for a website advertising pornographic websites cannot be considered to concern:

(a) a bona fide offering of goods; nor
(b) legitimate non-commercial or fair use of the domain name,

if only because this use tarnishes the reputation of the well-known trademark BENETTON. Finally, there is no evidence that Respondent was commonly known by the domain name prior to this dispute.

In light of the foregoing, the Panel finds that Respondent has no rights or legitimate interests in the domain name at issue.

d. Bad faith

Paragraph 4b (i) of the UDRP states that circumstances indicating that Respondent has registered the domain name primarily for the purpose of selling or renting it to Complainant for a monetary consideration in excess of Respondent’s out-of-pocket expenses directly related to the domain name, shall be evidence of registration and use of a domain name in bad faith.

The Panel finds that these circumstances are present here.

Respondent has offered the domain name for sale at a domain name auction site, which bears a sign that any offer below USD 550 will be ignored, whereas Respondent has replied to the Cease and Desist Letter - "This domain name is at USD 450". Both amounts are well in excess of the normal out-of-pocket expenses directly related to the registration of a domain name.

The use of Complainant’s trademark for a domain name used for a website which directs internet users to pornographic websites also constitutes evidence of bad faith usage of the domain name in question. (See also Ingersoll-Rand Co. v Frank Gully WIPO Case no. D2000-0021.) Such use tarnishes the distinctiveness and repute of Complainant’s trademarks and in the circumstances of this case demonstrates bad faith on Respondent’s part.

For completeness’ sake the Panel mentions the facts (i) that Respondent recently lost a case under similar circumstances (WIPO Case no. D2001-1185 National Hockey League and Lemieux Group Lp v Domain For Sale <nhlpenguins.com>) and (ii) that Respondent apparently is engaged in a pattern of (re-) registering domain names thereby preventing trademark owners to (re-)register the corresponding domain name.

The Panel therefore concludes that there is sufficient evidence that Respondent’s registration and use of the domain name <benettonsportsystem.com> is in bad faith.

 

9. Decision

On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence to request the transfer of the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel orders the registration of the domain name <benettonsportsystem.com> be transferred to Complainant.

 

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Wolter Wefers Bettink
Sole Panelist

Dated: March 18, 2002