DECISION

Agnona S.p.A. v. Maria Antonietta Lo Prete

Claim Number: FA0312000215369

PARTIES

Complainant is Agnona S.p.A, Borgosesia (Vercelli), Italy (“Complainant”) represented by Massimo Introvigne, of Studio Legale Jacobbaci & Associati, Corso Regio Parco 27, 10152 Torino, Italy.  Respondent is Maria Antonietta Lo Prete, (“Respondent”) Via Ostiense 234, 00100 Rome, Italy.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <agnona.us>, registered with Key-Systems Gmbh.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 2, 2003; the Forum received a hard copy of the Complaint on December 4, 2003.

On December 10, 2003, Key-Systems Gmbh confirmed by e-mail to the Forum that the domain name <agnona.us> is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name.  Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On December 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

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 January 7, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

            A. Complainant makes the following assertions:

1. Respondent’s <agnona.us> domain name is identical to Complainant’s AGNONA mark.

2. Respondent does not have any rights or legitimate interests in the <agnona.us> domain name.

3. Respondent registered and/or used the <agnona.us> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a well-known company that sells luxury products in the fashion field under the AGNONA mark.  Complainant holds several registrations with the U.S. Patent and Trademark Office (“USPTO”) for the AGNONA mark, including Reg. Nos. 1,928,430 (registered October 17, 1995) and 2,266,761 (registered August 3, 1999).  Complainant has used the AGNONA mark in commerce since December 3, 1965. 

Respondent registered the domain name on June 4, 2003.  The domain name resolves to an adult-oriented website. 

DISCUSSION

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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) 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; and

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

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

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

Complainant has established rights in the AGNONA mark through registration with the USPTO and its use in commerce since 1965.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that UDRP Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption; see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established.

Respondent’s <agnona.us> domain name is identical to the AGNONA mark because the domain name fully incorporates the mark and merely adds the country-code “.us.”  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations of the Complaint, the Panel may conclude that Respondent lacks rights and legitimate interests in the <agnona.us> 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., AF-0336 (eResolution Sept. 23, 2000) finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed.

In addition, Respondent’s misleading domain name tarnishes Complainant’s mark by redirecting Internet users to an adult-oriented website.  Respondent’s use of the <agnona.us> domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult-oriented website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services, nor a noncommercial or fair use; see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”.

Furthermore, Respondent was not authorized or licensed by Complainant to register or use domain names that incorporate the AGNONA mark.  Nothing within the record shows that Respondent is commonly known by the <agnona.us> domain name.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(iii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question.

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

Respondent’s use of the misleading domain name to redirect Internet users to an adult-oriented website tarnishes Complainant’s mark and is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith; see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <agnona.us> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: January 21, 2004

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