Generic Top Level Domain Name (gTLD) Decisions

Complainant is Max Mara Fashion Group S.R.L., ITALY ("Complainant") represented by James R. Davis, of Arent, Fox, Kintner, Plotkin & Kahn. Respondent is Mark O'Flynn, Rome, ITALY ("Respondent").

The domain name at issue is "maxmaraboutique.com" registered with Network Solutions.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 28, 2001; the Forum received a hard copy of the Complaint on March 29, 2001.

On April 2, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "maxmaraboutique.com" is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 26, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@maxmaraboutique.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 4, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

B. Respondent has not submitted a response in this matter.

Complainant, Max Mara Fashion Group S.R.L., owns several trademark registrations worldwide for its MAXMARA mark. In 1994, Complainant began using its marks in connection with clothing, fragrances, cosmetics, fashion accessories, and related products. Complainant’s marks have been used continuously and extensively in interstate and international commerce. Also, Complainant’s mark has been used in connection with the advertising and sale of Complainant’s goods and services. Accordingly, Complainant has invested substantial sums of money in marketing and development of its products and services. Consequently, millions of consumers worldwide purchase products bearing Complainant’s marks or are exposed to its marks through advertising and promotion.

Respondent, Mark O’Flynn, registered the disputed domain name October 1, 1999, after Complainant’s marks were registered in the U.S. and Italy. On April 17, 2000, Complainant sent Respondent a Cease and Desist letter that informed Respondent of Complainant’s rights in its marks, to which Respondent requested 12 Million Italian Lira ($5,400) for the transfer of the infringing domain name. Currently, Respondent maintains various infringing domain name registrations. To date, Respondent has not used the disputed domain name for any purpose.

Paragraph 15(a) of the Rules instructs this 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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Complainant’s rights are evidenced by its various trademark registrations for its MAXMARA marks.

The Panel finds that Respondent’s domain name, maxmaraboutique.com, is substantially similar because it is comprised of Complainant’s mark and a generic term. See JVC Americas Corp. v. Macafee, CPR006 (CPR Nov. 10, 2000) (finding that the domain name registered by Respondent, <jvc-america.com>, is substantially similar to, and nearly identical to Complainant's JVC mark); see also VeriSign, Inc. v. Nandini Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s Verisign mark and the domain names "verisignindia.com" and "verisignindia.net" where Respondent added the word "India" to Complainant’s mark).

In addition, the disputed domain name is confusingly similar because the generic term added to Complainant’s mark directly relates to Complainant’s business. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).

Moreover, the disputed domain name is so confusingly similar, a reasonable Internet user would assume the domain name is associated with Complainant’s mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Accordingly, Policy ¶ 4(a)(i) has been sufficiently satisfied.

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name, nor has Respondent used the domain name in connection with a legitimate noncommercial or fair use. See Broadcom Corp. v Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question).

Also, Respondent asserted no rights or legitimate interests in the disputed domain name; therefore, the Panel is entitled to conclude Respondent has no such rights or legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names"); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess).

As a result, Policy ¶ 4(a)(ii) has been satisfied.

The Panel finds that Respondent registered and used the disputed domain name in bad faith by offering to transfer the domain name to Complainant for an amount in excess of out-of-pocket costs. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name); World Wrestling Fed’n Entertainment, Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); see also American Anti-Vivisection Soc’y v. "Infa dot Net" Web Services, FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that "general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith").

Further, Respondent has passively held the disputed domain since its registration, which also indicates bad faith. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also DCI S.A. v. Link Commercial Corp. D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).

Finally, Respondent has registered several infringing domain names, which establishes a pattern of conduct and shows bad faith. See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a pattern of conduct where Respondent has registered many domain names unrelated to the Respondent’s business which infringe on famous marks and web sites); see also Encyclopaedia Britannica Inc. v Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).

As a result, Policy ¶ 4(a)(iii) has been satisfied.

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Therefore, it is Ordered that the domain name, maxmaraboutique.com, be transferred from Respondent to Complainant.