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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agnona S.p.A. v. Oleg Filipov-Guevreyan
Case No. DLA2003-0003
1. The Parties
The Complainant is Agnona S.p.A., Vercelli, Italy, of Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Oleg Filipov-Guevreyan, Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <agnona.la> is registered with GAA International
/ LA Names Corporation. The country code top-level-domain ".la" has
been assigned to the Lao People’s Democratic Republic, although is often used
by entities based in the Los Angeles area.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 1, 2003. On October 2, 2003, the Center transmitted by email to GAA International / LA Names Corporation a request for registrar verification in connection with the domain name at issue. On October 7, 2003, GAA International / LA Names Corporation 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 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2003.
The Center appointed Torsten Bettinger as the sole panelist in this matter on November 3, 2003. 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.
4. Factual Background
Complainant is an internationally well-known company in the field of wool, and the owner of several international trademarks including the word AGNONA.
The Respondent is a private individual who has registered and used the domain name <agnona.la> to redirect to a website with pornographic content.
5. Parties’ Contentions
The Complainant draws attention to the facts set out above and further contends as follows:
The domain name <agnona.la> is identical or confusingly similar to Complainant’s registered trademarks.
The Respondent has no rights or legitimate interest’s in respect of the domain name at issue.
There is no evidence of the Respondent’s 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.
There is no evidence that Respondent is making a legitimate non-commercial or fair use of the domain name.
The Respondent has registered and used the domain name in bad faith because the domain name is used solely to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trade mark "Agnona" as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Complainant contacted the Respondent and Respondent offered to sell the domain name at issue as well as the domain name <ermenegildozegna.la> which is also owned by the Respondent to Complainant for more US $15.000.
The Complainant requests that the Administrative Panel issue a decision that the domain name <agnona.la> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Paragraph 4(a), the Complainant must prove that each of the following three elements are present if it is to prevail:
(i) The Respondent’s "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 with respect to the domain name"; and
(iii) The "domain name has been registered and is being used in bad faith".
A. Identical or Confusingly Similar
The Respondent has registered the domain name <agnona.la>. This domain consists of exactly the same verbal elements as Complainant's protected trademark AGNONA except the domain name adds the country code top-level-domain ".la".
It is well established that the specific top level of the domain name such as ".org", ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
The Panel therefore concludes that the domain name is confusingly similar to a trademark or service mark in which the Complainant has prior exclusive rights and that the requirement of Paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Policy outlines (Paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondents’ rights or legitimate interest in the domain names. 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.
Considering this issue the Panel notes that the Respondent uses a domain name that, apart from the top-level-domain suffix, is identical to the trademark registered by the Complainant.
The Respondent does not trade under the domain name or the name AGNONA. Furthermore, the Respondent has not been and is not commonly known by said domain name or the name AGNONA.
The Panel further notes that Respondent has chosen not to submit a Response and draws from this failure of the Respondent to submit a Response the conclusion that the Respondent does not deny these facts.
Under these circumstances the Panel takes the view that the Respondent has no rights and legitimate interest in the domain name and that the requirement of Paragraph 4(a)(ii) of Policy is also satisfied.
C. Registered and Used in Bad Faith
The final factor is whether the Respondent has registered and uses the domain name in bad faith.
The Complainant provided evidence of facts and the Respondent has not denied these facts, which clearly indicate that the Respondent registered and is using the domain name in bad faith.
i) The registration has been done in bad faith because the Respondent could not ignore that AGNONA is a famous trademark. Other Administrative Panels have decided likewise in analogous cases, as demonstrated by the references to Panel Decisions in the Complaint (Banca Sella P.v.A v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v. JavierGarcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; and Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). The trademark has a long history and was registered in Italy at least back in 1954, and has been registered worldwide.
ii) Respondent is using the domain name in dispute to divert Internet users to a pornographic website. It can be inferred that Respondent is making a profit from the Internet traffic it diverts to these websites and links. Respondent is therefore using the disputed domain names to cause a likelihood of confusion for its own commercial gain, which is evidence of bad faith registration and use pursuant to Paragraph 4(b)(iv) of the Policy (see Kmart v. Kahn, FA 127708, National Arbitration Forum, November 22, 2002, finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284, National Arbitration Forum, August 21, 2000, finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
iii) Respondent registered the domain name <agnona.la> as well as the domain name <ermenegildozegna.la> which also corresponds to a famous trademark. When the Complainant addressed the Respondent asking for the price of the domain name, the Respondent sought a remuneration of US$15,000 for sale of <agnona.la> and <ermenegildozegna.la> in the "package". In his reply e-mail of July 4, 2003, the Respondent also stated that "the domain names do make a lot of money". Under these circumstances it is possible to infer that the domain name was registered and used for the purpose of selling it.
The Panel therefore concludes that Respondent registered and is using the domain name <agnona.la> in bad faith and that also the requirement of the Paragraph 4(a)(iii) of the Policy is satisfied.
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 <agnona.la> be transferred to the Complainant.
Dated: November 17, 2003