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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Agnona S.p.A v. Mr. Alexander Albert W. Gore

Case No. D2003-0496

 

1. The Parties

The Complainant is Agnona S.p.A, Vercelli, Italy, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Alexander Albert W. Gore from the organization Ukrainian Cat. University, Lviv Rudno, Ukraine.

 

2. The Domain Name and Registrar

The disputed domain name is <lanerieagnona.net>, which is registered with eNom, Inc.

 

3. Procedural History

3.1. Issuance of the Complaint

The complaint was filed with the WIPO Arbitration and Mediation Center (the "Center"), in electronic format, on June 24, 2003. The original of the complaint together with Annexes was submitted in hard copy on June 26, 2003. Following the Center’s Notification of the Complaint Deficiency dated July 10, 2003, an amendment to the complaint was filed, with the WIPO Arbitration and Mediation Center (the "Center"), in electronic format, on July 10, 2003. The amendment was submitted in hard copy on July 14, 2003.

3.2. Confirmation on Registration Detail

On June 24, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 2, 2003, eNom answered by email, indicating that by querying, one may see the contact data for the domain name holder. The Whois result for <lanerieagnona.net> dated July 15, 2003, confirms the data regarding the domain name holder indicated in the complaint as amended. The Panel itself made verification on August 28, 2003, which also confirms the data regarding the domain name holder indicated in the complaint as amended.

3.3. Formal Requirements Compliance Check

The Center verified that the complaint as amended 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").

The Panel independently determined and agreed with the assessment of the Center that the complaint as amended is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules.

3.4. Payment of the Fees

According to paragraph 4(g) of the Policy and paragraph 19(a) of the Rules, the Complainant paid on time and in a required amount the fee for the single-member Panel.

3.5. Notification of the Complaint

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the complaint and of the commencement of the proceedings commenced on July 15, 2003.

The Notification specified, in accordance with the Rules, paragraph 5(a), August 4, 2003, as the due date for the submission of the response.

Paragraph 2(a) of the Rules provides that it is the provider’s responsibility to employ reasonably available means calculated to achieve actual notice of the Respondent. The Paragraph further provides that this responsibility is discharged:

- by sending the complaint to each of the addresses shown in the Registrar’s Whois database for the domain name holder and the technical and administrative contact and to the address supplied for the Billing contact, and

- by sending the complaint in electronic form to the respective e-mail addresses, to the postmaster at the domain name and to any address on an active web page to which the domain name resolves, and to any other addresses notified to the sender by Respondent or provided by Complainant.

The Center had sent the Notification of the Complaint and Commencement of the Administrative Procedure, by post and by email, to all the addresses shown in the Registrar’s Whois, as listed for the Respondent Alexander Albert W. Gore from the Ukrainian Cat. University and to the postmaster of the domain name.

The Panel accepts that, in the light of the information available to it, the Center has employed all means reasonably available to it in order to achieve notice to the Respondent and the Respondent received notice at least by one of the means employed as to the Notification of the Complaint and Commencement of the Administrative Procedure.

3.6. Response Default

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2003. The message sent by email at the address mentioned in the Registrar’s Whois, has not reached the address due to permanent fatal errors of the address.

The fact that the message sent by email containing the Respondent’s default Notification has not reached the Respondent cannot be considered a procedural breach, as the notification of the Respondent’s default is not provided either by the Policy, the Rules or the Supplemental Rules, and the Respondent had received actual notice of the complaint, Commencement of the Administrative Procedure and of the date until a response is due.

3.7. Constitution of the Administrative Panel

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on August 14, 2003.

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 Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

3.8. Language of the Proceedings

The Panel considers that according to paragraph 11 of the Rules the language of the proceedings is English.

 

4. Factual Background

Complainant is an internationally well-known company in the field of wool, as a manufacturer, its mill providing designers such as Ralph Lauren, Calvin Klein, Chanel and Versace with finest cashmere, camel, mohair, alpaca and vicuna fabrics, and recently as a fashion house, with shops all over the world, as it states on its website "www.agnona.com."

The Complainant is the owner of several international trademarks including the words AGNONA and AGNONA LANERIE, the oldest of them dating back to 1954, as:

• Italian registration for AGNONA LANERIE No. 00678357, whose first application dates back to 1954

• International registration for AGNONA LANERIE No. 703.193 from June 6, 1998, which extends its protection, inter alia, to Ukraine.

These are uncontested facts, which result from the appendixes to the complaint.

Besides the trademark registrations, an Internet search for Agnona or Lanerie Agnona resolves to the Complainant’s website "www.agnona.com" or to websites with information regarding the Complainant and its business.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

I. The domain name <lanerieagnona.net> is confusingly similar with the trademarks and trade name AGNONA and LANERIE AGNONA owned by Complainant.

II. The Respondent has no rights or legitimate interests in respect of the domain name, because:

- there is no evidence, before the dispute, of Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- the Respondent has never been commonly known by the domain name, nor did he do business under the domain name;

- there is no evidence that Respondent is making a legitimate non-commercial or fair use of the domain name.

III. The Respondent registered and used the disputed domain name in bad faith because:

- there is no way that the Respondent has not been aware of the famous trademarks and trade names AGNONA and LANERIE AGNONA, as the association between AGNONA and LANERIE is uniquely found in Complainant’s trademarks and trade names;

- the Respondent operates in bad faith also because he registered other domain names corresponding to internationally well-known Italian trademarks: for example, <astispumante.net>, <elenamiro.net>, <ferrari-scuderia.net>, <nutellaferrero.com>, <parcosrl.com>, <zegnaermenegildo.net> for the same purpose as the disputed domain name, namely to use them as openers for pornographic portals (in Italian), selling various services connected with pornography;

- the domain name is used in bad faith, as mentioned, the default page of <lanerieagnona.net> resolves to a pornographic portal (in Italian), selling various services connected with pornography. The redirection to pornographic sites from a domain name incorporating a well-known trademark is, per se, evidence of bad faith and constitutes a case of "pornosquatting";

- at the request of the Complainant’s attorneys to transfer the disputed domain name and another domain name which is the subject matter of a separate proceeding, the Respondent offered to sell one for 25,000 USD or both of them for 40,000 USD. Such an offer proves, in the Complainant’s opinion, the intent of the Respondent to sell the disputed domain name for an amount in excess of out-of-pocket costs.

B. Respondent

Properly notified according to paragraph 2(a) of the Rules, the Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

6.1. Substantive Elements of the Policy

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 show:

A. 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

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

C. that the domain name has been registered and is being used by the Respondent in bad faith.

Paragraph 5(e) of the Rules instructs the Panel that:

"if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint."

Further paragraph 14(b) of the Rules instructs the Panel that: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."

A. Identical or Confusingly Similar

The record shows that the Complainant holds several registrations all over the globe in the mark Agnona and Agnona LaneriE, some registrations in Italy for example, dating from 1954. Also the record shows that the Complainant has reflected the mark AGNONA in its own active domain name <agnona.com>.

In Italian, "laneria" means, as the eleventh edition of "Il Nuovo Zingarelli - Vocabolario della lingua Italiana," states, a fabric made out of wool or a wool fabrics shop or warehouse, while the word "agnona" is not listed in the mentioned vocabulary, the most popular dictionary in the Italian language.

Therefore, even if a part of the disputed domain name could be considered descriptive, such a description combined with the word "agnona" becomes a unique association of words, as the Complainant contends, associated with the Complainant’s business, the Complainant’s business being known under this name.

Further, there is no indication that "agnona lanerie" is a common generic term for the class of goods or services provided by the Complainant, also because of the popularity of the Complainant’s business. An Internet search (as the Panel conducted) for the words "agnona lanerie," which corresponds to the Complainant’s mark, resolves to several addresses, all of which contain references to the Complainant’s business.

As the Complainant contends, the disputed domain name is confusingly similar to the Complainant’s mark "AGNONA LANERIE."

The main difference between the disputed domain name and Complainant’s mark is the reverse order of the two words which form the mark. This does not render the disputed domain name distinctive from the Complainant’s trademark (See, Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Alexander Albert W. Gore, WIPO Case No. D2003-0483).

As the Panel stated in the prior-mentioned decision, the fact that the disputed domain name resolves to a portal in Italian language, exacerbates the confusion created by the discussed similarity.

The Panel finds that the addition of the generic top-level domain "net" is without legal significance and does not render the disputed domain name different from the Complainant’s trademark.

For the reasons above, the Panel finds that the disputed domain is confusingly similar to the Complainant’s mark AGNONA LANERIE.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides three non-exclusive circumstances that can demonstrate that the Respondent has rights to or legitimate interests in the domain name:

(i) before any notice to the Respondent of the dispute, his 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial 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.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the domain name.

In the absence of any response, once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of proof on this element shifts to the Respondent to rebut the showing, as other prior UDRP panels have accepted (See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270, Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000–0413, The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145.

Silence of the Respondent might be an indication that he has no rights or legitimate interests in respect of the disputed domain name. (See Edgar Rice Burroughs, Inc. v. Adtel Communications, WIPO Case No. D2000–0115, Singapore Airlines Limited v. European Travel Network, Wipo Case No. D2000–0641, Bayerische Motoren Werke AG v. Null, WIPO Case No. D2002-0937).

Having considered the prior practice of UDRP panels, in the present case, the Panel finds that the Complainant established a prima facie showing that the Respondent has no rights to or legitimate interests in the disputed domain name.

The Panel, referring to the Respondent, has no indication whatsoever of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

There are no references to the disputed domain name on the web page accessed by it. In fact, the web page accessed by the disputed domain name is a pornographic one named "www.web.sex.it" (in Italian), selling various services connected with pornography.

The Panel does agree with other Panels (See Motorola, Inc. vs NewGate Internet, Inc., WIPO Case No. D2000-0079) that many adult sites are perfectly legal and constitute bona fide offering of goods or services, but in the present case, as the Complainant contends, there is no connection between the disputed domain name and the website accessed by the disputed domain name.

Besides this, there is no indication on the website "www.lanerieagnona.net" that the disputed domain name is used as a "cybermark," in which the Respondent would have legitimate rights or interests.

The contentions of the Complainant, which have not been disputed by the Respondent, show that the Respondent is not a licensee of the Complainant and no permission or consent has been granted to the Respondent to use the agnona lanerie mark or to apply for any domain name incorporating this mark.

At the same time, the Panel cannot find that the Respondent was using the domain name in the descriptive sense, describing the types of businesses listed on the website to which the domain name resolves, as prior UDRP panels have recognized that it may be considered as evidence for legitimate rights and interests of the Respondent in the disputed domain name. (See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001–0031), because, even if the disputed domain name contains the generic word "laneria," this word is not used to describe the Respondent’s website activities. The website operated by the Respondent could have been active to any other nomination, as it has nothing in common with the wool fabrics field, in which the Complainant operates.

Moreover, related to the fact that the Respondent failed to submit a response to the Complainant’s allegations, the Panel will not, in these circumstances, draw an inference that Respondent, prior to notice of a dispute, made demonstrable preparations to use the disputed domain name for a bona fide offer of goods or services.

Additionally, the Respondent is not commonly known by the domain name <lanerieagnona.net>, especially because his name or the name of the organization shown in the Registrar’s Whois does not include any of the words used in the disputed domain name, and also because the Respondent does not prove that he holds a trademark LANERIE AGNONA, AGNONA or LANERIE for the types of services offered on its website.

As regarding the circumstance provided by paragraph 4(c)(iii), there is no evidence that the Respondent is making a legitimate noncommercial or fair use or is making an educational, political satirical or other use of the disputed domain name for the purposes of free speech or any other recognized category of fair use.

It is obvious that the website accessed by the disputed domain name sells the pornographic services offered.

For the above said considerations and taking into account the failure of Respondent to file a response to the Complainant’s allegations, the Panel finds that the Respondent has no legitimate rights to or interests in the disputed domain name.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) provides that 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 the Respondent has registered or has 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 his documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has 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 he has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his website or location or of a product or service on your website or location.

Even if the Panel is not limited to the circumstances provided by paragraph 4(b), the Panel considers that the provisions of paragraph 4(b)(i) and 4(b)(iv) of the Policy are applicable in the present case and it shall not go further in analyzing the remaining circumstances provided by paragraph 4(b).

The Panel shall analyze first the applicability in the present case of paragraph 4(b)(iv) of the Policy, and then the applicability of 4(b)(i) of the Policy.

Applicability to the present case of paragraph 4(b)(iv) of the Policy

Considering the complaint and the evidence submitted in the case, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source and affiliation, or endorsement of his website or location.

The application of the paragraph 4(b)(iv) of the Policy, implies in the present case two elements of equal legal significance: awareness by the Respondent of the Complainant’s long-standing trademark at the moment of registration of the disputed domain name and registration and use of the disputed domain name for commercial gain.

The first element is obvious as the record shows that the Complainant holds several registrations all over the globe in the mark Agnona and Agnona LaneriE, some registrations in Italy for example, dating from 1954. An Internet search (as the Panel conducted) for the words "agnona lanerie," which corresponds to the Complainant’s mark, resolves to several addresses, which contain references to the Complainant’s business. Therefore there is no way that the Respondent could have ignored the fact that the expressions "lanerie agnona" or "agnona lanerie" are used for describing the business of the Complainant.

A circumstance in the favor of the assertion that the Respondent was aware at the time of registration of the Complainant’s mark, is the fact that the Respondent has registered with some variations domain names corresponding to other well-known trademarks such as Nutella, Ferrari, Astispumanti and Sparco. These domain names were registered on the same day as the registration of the disputed domain name. The Complainant contended, and the Panel verified, that the Respondent’s domain names resolve to different pornographic sites connected to the pornographic site accessed by the disputed domain name. The connection is obvious as the beginning of the web address to which the mentioned domain name registered by the Respondent and the disputed domain name resolves, is the same "www.web.sex.it/locale."

The Respondent’s conduct is a classic example of "opportunistic bad faith" as other panels found in similar situations (See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Banca Sella s.p.a v. Mr. Paolo Parente, WIPO Case No. D2000-1157, Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).

The second element which sustains the applicability of paragraph 4(b)(iv) of the Policy to the present case, namely the use of the disputed domain name for commercial gain, is also obvious.

Applicability to the present case of paragraph 4(b)(i) of the Policy

Even if the applicability of paragraph 4(b)(iv) of the Policy to the present case would be considered enough to support the bad faith of the Respondent in registering and using the disputed domain name, the Panel considered that some consideration on the offer made by the Respondent to the Complainant in relation to the sale of the disputed domain name is required.

At the request of the Complainant’s attorneys to transfer the disputed domain name and another domain name, which is the subject matter of a separate proceeding, the Respondent offered to sell one of them for 25,000 USD or both for 40,000 USD.

The excessive price requested by the Respondent to sell the disputed domain name to the Complainant, corroborated with the fact that he registered as domain names different well-known trademarks, may be a strong indication that the Respondent primarily registered the disputed domain name with the purpose of selling the domain name registration to the Complainant, who is the owner of the trademark, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.

Therefore, the Panel concludes that the disputed domain name was registered and used in bad faith.

 

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, <lanerieagnona.net>, be transferred to the Complainant.

 

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Beatrice Onica Jarka
Sole Panelist

Dated: August 28, 2003