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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Luxottica S.r.l. v. Lux Ottica LLC

Case No: D2002-0904

 

1. The Parties

The Complainant is Luxottica S.r.l., 20123 Milano, Italy, represented by Studio Legale Cartella-Manzoni of Italy.

The Respondent is Lux Ottica LLC, C/O Danko Vukovic, 63939 Fairdealing, Missouri, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <lux-ottica.com>is registered with eNom, Inc. ("eNom"), Washington 98052, United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 30, 2002. On September 30, 2002, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 8, 2002, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 10, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2002. On October 11, 2002, the Center advised the Respondent that an error had been detected in the Notification of Complaint document sent on October 10, 2002. Paragraph 2 "Date Complaint Received" showed an incorrect name of Complainant and dates of receipt of the Complaint. The Center forwarded a corrected version of the Notification of Complaint, along with a copy of the Complaint, to the Respondent on October 11, 2002.

On October 12, 2002, Mr. Ralph Fisher, a partner in the Respondent company, forwarded an e-mail to the Center enclosing a copy of an email addressed from him to Mr. Marco Fazzini. Mr. Fisher provided the correct address of Mr. Danko Vukovic and advised Mr. Fazzini that he had urged Mr. Vukovic to cease operation and close the website.

The Center forwarded a further copy of the Notification of Complaint, along with a copy of the Complaint, to Mr. Danko Vukovic at the address provided by Mr. Fisher.

The Response was filed with the Center on October 31, 2002.

The Center appointed Ross Carson as the sole panelist in this matter on November 12, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Center transmitted the Case File to Ross Carson on November 12, 2002, and advised that the Panelist's decision was due by November 26, 2002.

 

4. Factual Background

Complainant is the holder of numerous registrations for the trademarks LUXOTTICA and LUXOTTICA and design currently covering more than one hundred countries all over the world, including the following registrations:

U.S. Trade mark Registration No. 1.254.409, registered October 18, 1983, LUXOTTICA, registered and used for eyeglasses, sunglasses, templates and eyeglass frames [see Annex 41];

U.S. Trade-mark Registration No. 1.511.615, registered November 8, 1988, LUXOTTICA and figure, registered and used for eyeglasses, sunglasses, templates and eyeglass frames [see Annex 42];

European Community Trade-mark No. 282.665, registered on December 21, 1999, LUXOTTICA and design registered in class 9 and mainly used for eyeglasses, sunglasses, templates, eyeglass frames and lenses [see Annex 43];

International Trade mark No.. 470.072, registered July 7, 1982, (renewed by application no. 11037D/2002), LUXOTTICA and figure, registered in classes 9, 10 and 14 and mainly used for eyeglasses, sunglasses, templates, eyeglass frames and lenses, extended to 20 countries, including Yugoslavia [see Annex 44];

Italian Trade-mark Registration No. 333.141, registered July 7, 1982, (renewed by application no. MI2002C001435), LUXOTTICA and figure, registered in classes 9, 10 and 14 and mainly used for eyeglasses, sunglasses, templates, eyeglass frames and lenses [see Annex 45];

Italian Trade mark Registration No. 841.233, registered November 7, 2001, LUX OTTICA, registered in class 9 and mainly used for eyeglasses, sunglasses, templates, eyeglass frames and lenses [see Annex 46].

 

5. Parties’ Contentions

A. Complainant

Factual Grounds

Complainant submits that Luxottica Group is the world’s leader in the design, manufacturing and distribution of prescription frames and sunglasses in the mid- and premium-priced categories. Many of the spectacles are made with metal or plastic frames manufactured at Luxottica’s factories.

Founded in 1961, Luxottica has expanded constantly, leaving the holding company to exercise direct control over all significant components of the eyewear production and distribution process, including design, production, worldwide distribution to wholesale customers. In North America retail sales of frames and sunglasses are made directly to end-consumers through two first-rank retail chains.

Luxottica Group’s Annual Report for the year 2001, containing information on the dimensions and the reputation of the Group is attached at Annex 8.

As of December 31, 2001, Luxottica Group designed and produced approximately 2,250 styles of prescription frames and sunglasses, marketed under a variety of well-known brand names, both house brands and designer lines. Luxottica’s collections include about 900 house brand frames and about 1.350 designer frames, which are manufactured under trade mark licenses. In 2001, Luxottica sold approximately 31,6 million frames in 115 countries through an extensive worldwide wholesale network and a retail distribution network for the most part in North America.

All significant components of the eyewear production process are managed internally: design, prototype manufacturing, product development, production of moulds and individual parts of the frames, including the recent introduction of the production of crystal and polycarbonate lenses for sunglasses. The manufacturing takes place in the six Italian highly automated facilities, each tailored to a specific production technology.

The distribution network is structured in 29 wholly or partially owned wholesale subsidiaries that are strategically located in major markets worldwide. In markets where the Group does not have wholesale subsidiaries, over 90 independent distributors sell its products.

The acquisition of 100% of LensCrafters in 1995, and its subsequent expansion, as well as the acquisition of 100% of Sunglass Hut International in 2001, have positioned Luxottica as the leader in the mid- to premium- priced categories of the North American optical market. In 2001, the retail sales amounted to $1.886,7 million U.S. through 868 LensCrafters stores and 1.994 Sunglass Hut International stores.

In 2001, the total sales amounted to Euro 3.064,9 million, an increase of 26,8% compared with the year 2000.

In January 1991, Luxottica was quoted on the New York Stock Exchange and the current value of its ordinary shares is twenty times the initial one.

At the head of the Group is the holding company Luxottica Group s.p.a..

Complainant Luxottica s.r.l. (whose previous business name was Luxottica s.p.a.; see Annex 9) is a company totally owned by Luxottica Group s.p.a. and performs most of the manufacturing activity of the Group.

The Complainant is the holder of the house trade marks Luxottica, Vogue, Persol and Sferoflex [see Annexes 35 to 39] and licensee of all the lines under the designers’ trade marks, that are some of the most famous stylists’ and luxury products manufacturers’ trade marks: Giorgio Armani, Emporio Armani, Chanel, Web, Brooks Brothers, Moschino, Salvatore Ferragamo, Bulgari, Anne Klein, Emanuel Ungaro, Byblos, Sergio Tacchini, Genny [see Annexes 10 to 31].

Luxottica Leasing s.p.a. (a company totally owned by Luxottica Group s.p.a.) is the holder of the house trade marks Ray Ban, Revo and Arnette [see Annexes 32 to 34].

Killer Loop Eyewear s.r.l. (a company totally owned by the Complainant) is the holder of the house trade mark Killer Loop [see Annex 40] and legitimate user of the house trade marks Ray Ban, Revo and Arnette.

Complainant is the holder of numerous registrations of the trademark LUXOTTICA and LUXOTTICA & design currently covering more than one hundred countries all over the world, including U.S. trade mark no. 1.254.409, granted on October 18, 1983, LUXOTTICA; U.S. trade mark no. 1.511.615, granted on November 8, 1988, LUXOTTICA and figure; European Community trade mark no. 282.665, granted on December 21, 1999, LUXOTTICA and design; International trade mark no. 470.072, granted on July 7, 1982, LUXOTTICA and figure; Italian trade mark no. 333.141, granted on July 7, 1982, LUXOTTICA and figure; Italian trade mark no. 841.233, granted on November 7, 2001, LUX OTTICA.

Complainant submits that LUXOTTICA is one of the most famous trade marks throughout the world, especially in the field of eyeglasses and sunglasses, not only for the wide distribution of the products but also due to massive advertising and constant links to the above mentioned licensed trade marks.

Strong reputation and appreciation by both market-operators and end-consumers are attached to the trade mark LUXOTTICA whose goodwill and selling power are enormous and highly valued.

The Group also operates through various Internet addresses, such as: "www.luxottica.com" (which is the Group’s official web site), "www.rayban.com", "www.revo.com", "www.killerloop.com", "www.arnette.com", "www.persol.com", "www.lenscrafters.com", "sunglasshut.com".

Complainant submits that it recently became aware that the Respondent registered the domain name <lux-ottica.com> on December 5, 2001.

Apparently from late June 2002, the Respondent began using <lux-ottica.com> as an Internet address to convey netsurfers to its web site in which several models purportedly genuine and manufactured by Complainant are offered at extremely low prices. (See Annex 4, 5 and 58).

On August 2, 2002, the Respondent was sent a formal notice and warning letter in order to obtain the transfer of the domain name <lux-ottica.com> to the Complainant, as well as the cessation of any further improper use of the web site [see Annex 47].

Complainant submits that the answers and behavior of one partner in Lux Ottica LLC (Mr. Ralph Fisher) were apparently cooperative, even if unreliable as to alleged good faith [see Annexes 48 to 54]. The reply from the other partner in Lux Ottica LLC (Mr. Danko Vukovic) was totally and unreasonably negative [see Annex 55] and this left the Complainant no other choice than to enact the mandatory administrative proceeding provided for by the Policy and the Rules.

Complainant's submissions on Legal Issues

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

Under the heading "Factual Grounds", the main trade mark registrations in which the Complainant has rights and on which the Complaint is based have been listed [see Annexes 41 to 46].

The Complainant submits that there is no reasonable doubt regarding the identity/similarity between the trade marks LUXOTTICA and LUX OTTICA registered by the Complainant, on the one hand, and the second level domain name lux-ottica registered by the Respondent, on the other hand.

Complaint submits that lux-ottica is identical to LUXOTTICA and LUX OTTICA, since the hyphen put between the words lux and ottica is clearly nothing other than a typical technical expedient frequently used by domain grabbers or cybersquatters to avoid the obstacle of a prior famous trade mark’s registration as a domain name and, at the same time, to get as close as possible to the other’s famous trade mark, so benefiting from its goodwill.

Complainant submits that even supposing that lux-ottica might not be considered identical to LUXOTTICA or LUX OTTICA, the Complainant hardly sees how it may be reasonably denied that they are confusingly similar, not only in their literal structure (and hence in an abstract comparison), but also considering that the more famous and inherently distinctive is the infringed trade mark, the higher is the likelihood of confusion among the public.

B. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, para. 4(a)(i), Rules, para. 3(b)(ix)(2))

The Complainant submits the following:

As concerns paragraph 4 c (i) of the Policy, the offering of goods made since June 2002, on the Respondent’s web site can in no way be reputed as being bona fide, as the Complainant will explain in sub-paragraph C. It is even too obvious that the notice of the dispute normally comes after the challenged conduct is commenced, so the mere circumstance that on August 2, 2002, the Respondent’s web site had been operating for about one month with the address <lux-ottica.com> is not per se relevant, otherwise the mandatory administrative proceeding under the Policy and the Rules would be usefully available only against domain names not in use.

As concerns paragraph 4 c (ii) of the Policy, the Respondent is not commonly known by the domain name. On the contrary, it is the Complainant that is known worldwide as Luxottica (the major companies of the Group have Luxottica as their business name), which is also used as a domain name for the official web site "luxottica.com". Purportedly, Lux Ottica LLC was incorporated in May 2002, but there is no evidence of any actual activity at least up to the end of June of 2002. Again, if the mere incorporation of a company bearing the challenged business name (which is not a difficult matter indeed, especially when the company just consists of a phone number, a fax number and a mail box) as sufficient to satisfy the circumstance under paragraph 4 c (ii) of the Policy, then the utility and efficacy of the Policy in combating domain grabbing and cybersquatting would be only apparent.

As concerns paragraph 4 c (iii) of the Policy, it is sufficient to cast a quick glance at the Respondent’s web site to realize that it has been created with a precise commercial purpose, namely the purpose of selling – mainly in the North American market – sunglasses of uncertain origin and doubtful authenticity; and it is a fact that the web site at stake is used for e-commerce purposes, as also declared by Mr. Fisher and Mr Vukovic.

C. The domain name was registered and is being used in bad faith.

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

The Complainant is convinced that the condition of bad faith under sub-paragraph C. is satisfied.

Complainant submits that the circumstances provided for by paragraphs 4 b (i) and 4 b (iv) of the Policy occur:

As concerns paragraph 4 b (i) of the Policy, the Respondent did not try to simply transfer the domain name <lux-ottica.com> to the Complainant, but proposed that the Complainant become a shareholder of the Respondent and that Lux Ottica LLC be ranked as a primary dealer of the Luxottica Group’s products in the U.S.A. [see Annexes 55 and 56]. In other words, by levering on the challenged domain name, the Respondent tried to ex post facto legitimize its conduct by being integrated in the Complainant’s group’s structure and to take advantage for the future.

As concerns paragraph 4 b (iv) of the Policy, there could not be any doubts about the Respondent’s intention "to attract for commercial gain Internet users to the Respondent’s web site …, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location". To this purpose, nothing was left to chance by the Respondent. It is not by chance that Mr. Vukovic decided to register at eNom Inc. the domain name <lux-ottica.com>: that was the best solution for obtaining a registration in the Internet in spite of the prior registration of <luxottica.com> and at the same time for approaching in the most confusing way the Complainant's famous trade mark and Complainant's corresponding domain name already operating in connection to the Complainant’s official web site. Even supposing that the Respondent had a true and bona fide intention to export in the U.S.A. genuine sunglasses made by Luxottica, there was not any need or necessity at all to choose the domain name <lux-ottica.com>. That choice was clearly arbitrary and only aimed at creating a likelihood of confusion with the Complainant’s organization and activity; and surely no one could reasonably allege that the Respondent may not be aware of the existence of the trade mark LUXOTTICA.

It is not by chance that Mr. Vukovic decided to organize a company located in the U.S.A. with the business name Lux Ottica LLC, especially when considering that two companies of the Luxottica Group – whose names are Luxottica U.S.A. Inc. and Luxottica U.S. Holding Corporation – have been registered and operating in the U.S.A. for a long time [see Annex 8]; also in this case, there was no need or necessity for the Respondent to conduct its businesses under the name Lux Ottica.

It is not by chance that the HTML structure of the web site "lux-ottica.com" includes the words Lux, Luxottica and Lux-ottica as meta-tags keywords, with the clear intent to get the widest visibility in the search engines, to be cited together with the official Luxottica’s Internet addresses and hence to convey people to the Respondent’s web site [see Annex 57]; this situation is being made even more detrimental to the Complainant by the circumstance that through the "affiliate system" set up by the Respondent the links to the challenged web site are indefinitely and without any control multiplied, thus contributing to expand and disseminate the visibility of the Respondent’s web site in the Internet.

It is not by chance that the text and the graphics of the Respondent’s web site have been so conceived as to look like an emanation or articulation of the official Complainant’s web site, or an entity somehow connected to the Complainant or operating under its authorization, sponsorship, endorsement or approval of the Complainant. All of the Respondent’s web site banners reproduce images drawn out of the Complainant’s products catalogues or out of the Complainant’s merchandise and visual materials and purposely digitized to be published on the web site (the same applies to the images of the single sunglasses models) [see, for example, Annexes 4, 5, 58 and Annexes 14, 32, 33, 37, 38, 40]. Further, all the links to the internal pages of the Respondent’s web site contain profiles briefly presenting one by one the famous trade marks of Luxottica’s production which are a literal and complete copy of the Brands Portfolio section of the official Complainant’s web site "luxottica.com" [see Annexes 58 and 59]. The Respondent could hardly have done more to create in the public the impression that "lux-ottica.com" web site is somehow connected to or sponsored, approved or endorsed by the Complainant’s organization, with the view of attracting for commercial gain Internet users to the Respondent’s web site.

B. Respondent

Respondent submits that it started selling sunglasses in April 2000, under name of Euro-Export, and was selling only Oakley sunglasses on eBay. As the business was expanding, in October 2001, Respondent received offers to sell sunglasses from major manufacturers such as Safilo Group, Marconi and Luxottica. In November 2001, Respondent started sales with more than 45 different brands on offer. In the beginning Respondent limited itself to eBay sales, but in December 2001, decided to use Lux Ottica as a name to conduct its future business, and registered a website "www.lux-ottica.com". Together with the domain registration Respondent changed its eBay username to "Lux-Ottica Store" and continued to place auctions under that name.

Respondent states that when it was starting out, and while choosing a name, it came up with Lux Ottica, not to gain any direct material interest directly from the name, but rather for it’s ‘soundness’ as LUX as for Luxury and OTTICA as for optics ("ottica" in Italian language means "optic", also as it is Italian there is association with good quality and design), but it sounded good, and what is important it sounded foreign in the United States.

As business expanded, in February 2002, Respondent organized a company with the corporate name Lux Ottica LLC in the State of Missouri, U.S.A. After incorporation in May 2002, (see annex 1), Respondent applied for a merchant account with Card Service intl. and implemented automatic credit card billing option on its new website version.

Respondent states that during its business history it has not had a single charge back, or any similar incidents, which proves its outstanding customer service. Respondent also applied for VeriSign secure site certificate (see annex 5), and was approved (certificate is valid until July 15, 2003, when Respondent will fill for next issue). Respondent also published its Terms of Service, which include Shipping Policy, Refund/Returns Policy and Privacy Policy (see annex 6).

Respondent submits that it has become a major online sunglasses retailer, selling more than 1,000 sunglasses a month, generating more than $200,000 monthly revenues, with eight full-time employees and offices across the United States, Italy and Yugoslavia. Its advertising campaigns, both online and ‘offline’ magazine ads, together with its rewards affiliate system, have expanded Respondent's visibility and name on the web.

Respondent avers that is has never stated that it is connected to Luxottica s.r.l., nor tried to pursue clients, or future clients through its connection with Complainant. All logo images used on the Respondent's website were represented in their original state. Respondent submits that it has not violated copyright on that issue. Images of the sunglasses and all other graphics are created in a private studio in Belgrade; therefore Respondent submits it has a full right to their use for commercial purpose.

Respondent states that:it is interesting that Respondent was not contacted or noticed by Luxottica s.l.r. until Respondent became the biggest online retailer, even though Respondent was located at the lux-ottica.com address more than six months before the domain arbitration was requested. Respondent submits that this proves that Luxottica s.l.r. does not care much about claiming the domain, but rather shutting down Respondent's business, because they see a major threat in Respondent's company to their eventual online business and general US sales. Respondent submits that it believes that Lux Ottica LLC, as a legal business, and as a regular taxpayer, has full right of ownership of the <lux-ottica.com> domain name."

Respondent's Submissions on Legal Issues

A. Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, para. 4(a)(i))

Respondent submits that reasonable doubt exists about similarity in the names Lux Ottica and Luxottica. First of all Lux Ottica LLC) is a United States registered company which is clearly stated on Respondent's website (see annex 9). Luxottica is an Italian based company which does not retail sunglasses directly. Respondent submits that to its knowledge Sunglasses Hut and Lens Crafters, sunglasses retailers, are a subsidiary of Luxottica Group, but Luxottica does not directly retail sunglasses. As to the domain name <lux-ottica.com>, since there is technical inability to represent its company’s name as is in the domain name, Respondent has used a hyphen in order to separate these two words, since _ (underscore e.g. Lux_Ottica.com), together with space are not permitted for use in domain names.

Respondent submits that the website content and appearance of the two companies do not have any similarities, therefore any similarity claims by Luxottica s.l.r. should be disregarded (see annexes 10 and 11).

B. Whether the Respondent has rights or legitimate interests in respect of the domain name

(Policy, para. 4(a)(ii))

Respondent submits that due to the technical inability to represent its official company name (Lux Ottica LLC) in a form of domain name, Respondent has used a hyphen in order to separate two words in its name, since an underscore e.g. Lux_Ottica.com, together with space is not permitted for use in domain names. Besides the domain name in dispute Respondent had no other option for clearly representing its company name on the web. Examples such as 1-800-sunglasses.com, sunglassesretail.com are banal and would not represent the company in a proper manner.

In the Complaint under Legal Grounds, paragraph B, section 1, allegation are made about Respondent's business conduct. Respondent submits that Luxottica s.l.r. does not have access to Lux Ottica LLC internal customer files, therefore Complainant cannot claim something which is untrue and harmful. Respondent submits that such a statement can be characterized as a slander and legal actions can be taken against it.

Due to its advertising campaigns for expanding its brand name Lux Ottica LLC is widely known by the domain name <lux-ottica.com>, which Respondent has actively used since its registration in December 2001. Proof of Respondent's prior activity can be proved with printouts from its eBay accounts (see annex 12), together with the printouts of its previous website appearance in December 2001, (see annex 13), and copies of sunglasses mailing receipts since November 2001, (see annex 7).

Respondent submits that Lux Ottica LLC, does not, and did not intend to domain grab, cyber squat, or make profit solely on the domain name, but rather to conduct its own business on that domain name. As for domain squatting allegations, Respondent denies that it ever contacted Luxottica s.l.r. with a domain sale offer, therefore such statements can be disregarded.

Respondent submits that it has been using the <lux-ottica.com> domain name for legitimately conducting sunglasses retail business. Regarding the Luxottica Group brands it has on its website, Respondent states that it supplies from authorized Luxottica s.l.r. dealers, therefore it sells genuine Luxottica s.l.r. sunglasses. It is up to Respondent's business policy and solely up to Respondent whether it will meet the MSRP (Manufacturers Suggested Retail Price), and which profit margins it will choose. Respondent's suppliers are and will be a trade secret, but in order to confirm the authenticity of the sunglasses sold Mr. Ralph Fisher sent 7 different pairs of sunglasses Respondent sells to Luxottica s.l.r. for inspection (value of more than $1,000). Respondent never received a response regarding that matter.

C. Whether the domain name has been registered and is being used in bad faith.

(Policy, para. 4(a)(iii))

Respondent denies the allegation made by Luxottica s.l.r. in their Complaint, Legal Grounds, section C, Paragraph 1 . Respondent's proposal to give Luxottica s.l.r. 20% of its company is solely based upon Respondent's goodwill to prove that it a fully legitimate business, with excellent customer and sales service. Respondent submits that it requested to have Luxottica s.l.r. as its direct supplier just to simplify the supply process, and improve Respondent's service. Allegations that Respondent based this proposal solely on the domain name, or that it tried to ‘legitimate’ its conduct is not true.

Respondent states that it does not require Luxottica’s approval in order to conduct its business. Respondent is a legal company, which obeys laws in its business conduct, and pays taxes regularly to the United States government. Luxottica s.l.r. has the right to be satisfied or unsatisfied of the way Respondent conducts business, but Complainant has no right to question the legitimacy of its business.

Respondent submits that it did not need to choose the Lux Ottica name at all, but repeats that this case is not so much about the domain name, but it is about Luxottica wanting to get Respondent out of the business by any means they can. Respondent avers that after the phone conversation with one of Complainant's lawyers, in which he made threats and untrue accusations, this domain name dispute is the only thing Complainant has left, and the only option Complainant has to harm Respondent's business. As to the name Lux Ottica, Respondent did not need to chose it, but had a full right to do so. There is no company registered in the State of Missouri, USA whose name is similar to Lux Ottica, so Respondent had a full right to name its company Lux Ottica LLC. If Luxottica s.l.r. have anything against this matter, they should contact the Secretary of the State of Missouri, Matt Blunt. Keywords in Respondent's websites HTML meta-tags were chosen and written by its webmaster Mr. Goran Pilipovic. His task was to expand the visibility of the website as much as possible. An affiliate system is set up in order to expand Respondent's visibility on the internet, but does not intend to deceive visitors as to a connection with Luxottica s.l.r. The Respondnet's website banners are made according to Respondent's unique design, and images used in them are not the property of Luxottica s.l.r. (see annex 14). All graphics and images on the Respondent's website are used according to all legal procedures, or are owned by Lux Ottica LLC.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable."

The burden for the Complainant, under Paragraph 4(a) of the Policy, is to prove:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark 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 and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

Complainant is the owner of the well known trademark LUXOTTICA through several registrations currently covering more than one hundred countries all over the world including the following registrations:

U.S. Trade mark Registration No. 1.254.409, registered October 18, 1983, LUXOTTICA, registered and used for eyeglasses, sunglasses, templates and eyeglass frames [see Annex 41];

U.S. Trade mark Registration No. 1.511.615, registered November 8, 1988, LUXOTTICA and figure, registered and used for eyeglasses, sunglasses, templates and eyeglass frames [see Annex 42];

European Community Trade mark No. 282.665, registered on December 21, 1999, LUXOTTICA and design, registered in class 9 and mainly used for eyeglasses, sunglasses, templates, eyeglass frames and lenses [see Annex 43];

International Trade mark No.. 470.072, registered July 7, 1982, (renewed by application no. 11037D/2002), LUXOTTICA and figure, registered in classes 9, 10 and 14 and mainly used for eyeglasses, sunglasses, templates, eyeglass frames and lenses, extended to 20 countries, including Yugoslavia [see Annex 44];

Italian Trade mark Registration No. 333.141, registered July 7, 1982, (renewed by application no. MI2002C001435), LUXOTTICA and figure, registered in classes 9, 10 and 14 and mainly used for eyeglasses, sunglasses, templates, eyeglass frames and lenses [see Annex 45];

Italian Trade mark Registration No. 841.233, registered November 7, 2001, LUX OTTICA, registered in class 9 and mainly used for eyeglasses, sunglasses, templates, eyeglass frames and lenses [see Annex 46].

The Luxottica Group was founded in 1961. As of December 31, 2001, the Luxottica Group designs and produces approximately 2,250 styles of prescription frames and sunglasses. The Luxottica collections include about 900 house brand frames and about 1,350 designer frames, which are manufactured under trademark licenses. In 2001 Luxottica sold approximately 31.6 million frames in 115 countries through an extensive worldwide wholesale network and through a retail distribution network primarily located in North America. In 2001, the total sales of the Luxottica Group amounted to Euro 3,064.9 million. The Luxottica Group sell frames under the LUXOTTICA trademark as well as under other brand name and designer name marks. The LUXOTTICA trademark is well known in relation to the design and production of many styles of prescription frames throughout Europe and North America.

The Luxottica Group also operates through various Internet addresses, such as: "www.luxottica.com" which is the Group's official web site. The trademark LUXOTTICA is an inherently distinctive trademark comprised of the prefix LUX and the suffix OTTICA.

The Respondent Lux Ottica LLC registered the domain name in dispute <lux-ottica.com> on December 5, 2001, (Annex 2). The Respondent began using <lux-ottica.com> as an operative internet address (Annexes 4, 5 and 58). The domain name in dispute is comprised of LUX and OTTICA separated by a hyphen followed by the identifier .com. The domain name in dispute is similar in sound and appearance to the registered trademarks of the Complainant.

The Panel finds that the domain name in dispute is confusingly similar to the Complainant's registered trademarks LUXOTTICA and LUX OTTICA & design.

B. Rights or Legitimate Interests

The Policy (Paragraph 4(c) outlines circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's right or legitimate interest in the domain name. These circumstances are:

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

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

(iii) the Respondent is 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.

The Respondent adopted the domain name <lux-ottica.com> with full knowledge of the Complainant's use of LUXOTTICA as a registered trademark. The Respondent's position is that the Respondent is entitled to use the domain name <lux-ottica.com> as the Respondent is offering for sale genuine frames and sunglasses bearing trademarks of the Luxottica Group purchased from unidentified wholesalers of the Complainant's products (Annexes 4, 5 and 58).

The Respondent states that Respondent originally chose the trading style LUX-OTTICA STORE, not to gain any direct material interest from the name, but chose the name for its soundness as LUX as for "Luxury" and OTTICA as for "optics" ("ottica" is stated to be "optic" in the Italian language). The Respondent states that the tradename LUX OTTICA STORE was a good tradename as it sounds Italian, and Italy is associated with good quality and design. The Respondent further submitted that foreign sounding names also have a certain cache in the United States.

Subsequently in May 2002, the Respondent organized a company under the laws of the State of Missouri under the corporate name Lux Ottica, L.L.C. The Respondent submits there is a technical inability to represent the company name Lux Ottica in a domain name so that it was necessary to place a hyphen between Lux and Ottica in the domain name in dispute.

The Respondent could have chosen a domain name not associated with Complainant's trademarks LUXOTTICA and LUXOTTICA and design as the substantive part of Respondent's domain name. By choosing a domain name confusingly similar to the Complainant's trademark LUXOTTICA the Respondent has not established that it is making a legitimate non-commercial or fair use of the domain name without interest for commercial gain to misleadingly divert consumers to its site.

Two companies of the Luxottica Group whose names are Luxottica U.S.A. Inc. and Luxottica U.S. Holdings Corporation have been organized and operating in the United States for many years. The Respondent has inserted Lux and Luxottica as meta-tag keywords in the HTML structure of its web site <lux-ottica.com> to convey internet users to the Respondent's wet site. (Annex 57). The text and graphics of the Respondent's web site resemble the format of the Complainant's web site.

The Respondent has chosen and used a confusingly similar domain name to Complainant's registered trademarks as well as confusingly similar hyperlinks to attract customers to its web site <lux-ottica.com>.

In Houghton Mifflin Co. v The Weatherman, Inc. WIPO Case No. D2001-0211, the Respondent was selling legitimate goods of the Complainant. The Panel held that the Respondent has a duty to inform visitors to Respondent's website that the Respondent is not the Complainant. At paragraph 6.B. the Panel stated:

"The extent to which a purveyor of legitimate goods can reflect that fact by using the manufacturer's or licensor's name as part of a domain name is a difficult issue. At a minimum, however, to establish a legitimate interest under the Policy, a licensee or reseller using a domain name that consists solely of a trademark owner's mark must take steps to prevent confusion by making clear in its use of the domain name that it is not the mark owner, even if it offers legitimate goods."

The Respondent attracts customers to its website by use of the domain name <lux-ottica.com> and by use of LUX and LUXOTTICA as meta-tag keywords in the HTML structure of its website <lux-ottica.com>. On Respondent's website Respondent utilizes the trade-name Lux Ottica. The web pages also resemble the format of Complainant's website and lead visitors to conclude that the Respondent is or is associated with the Complainant. The Respondent has not taken steps to prevent confusion by making it clear to consumers that the Respondent domain name holder is not the owner of the registered trademarks for LUXOTTICA or including LUXOTTICA.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states:

"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 or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel relies on the facts reviewed immediately above with respect to the choice of the domain name <lux-ottica.com>, the choice of the corporate and trading style Lux Ottica, the use of hyperlinks lux and luxottica, the format of the Respondent's web pages resembling Complainant's material and the absence of any attempt to distinguish the Respondent's business from the Complainant's as supporting the conclusion that by using <lux-ottica.com> the Respondent has intentionally attracted for commercial gain, internet users to Respondent's website by creating a likelihood of confusion as to source, affiliation or endorsement of Respondent's website.

The Panel having decided that the Respondent is in breach of Paragraph 4(b)(iv) makes no finding with respect to Complainant's other submission that the Respondent is also in breach of Paragraph 4(b)(i) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lux-ottica.com> be transferred to the Complainant.

 


 

Ross Carson
Sole Panelist

Date: November 21, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0904.html

 

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