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Gianfranco Ferre' S.p.A. v. GFF Inc. [2004] GENDND 618 (10 May 2004)

1. The Parties

The Complainant is Gianfranco Ferre' S.p.A., Milan, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.

The Respondent is GFF Inc., Web Master, Takamatsu Takamtsu, Japan.

2. The Domain Name and Registrar

The disputed domain name <gffgroup.com> is registered with eNom, Inc. ("eNom").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2004.

On March 17, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. eNom failed to submit a verification response. Therefore, the Center made a Whois printout on March 19, 2004, which showed that the disputed domain name was registered with eNom, and that the Respondent, GFF Inc. was the current registrant of the disputed domain name. The Panel would like to remind eNom of the importance of providing a verification response so that the Center can ascertain the contact information of the Respondent and provide appropriate notice, and furthermore to ensure that the domain name registration remains locked during the UDRP proceedings.

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 March 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 15, 2004.

The Center appointed David J.A. Cairns as the sole panelist in this matter on April 21, 2004. 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

The Complainant is an Italian company, with its business in the fashion sector.

The Complainant is the owner of various registered trademarks that include GFF in capital letters. Italian registration Nº. 495710 filed on April 7, 1988, and United States registration Nº. 1721285 filed on May 29, 1990, and recording a first use of the trademark in commerce on April 19, 1984, relate to a mark consisting of the capital letters GFF in a particular script and contained within a rectangle. When the Italian registration was renewed in 1998 the device of a rectangle ceased to be part of this registration, so that there remains the capital letters GFF in the particular script appearing in the registration.

The Complainant is also the owner of many other trademark registrations worldwide including the capital letters GFF in combination with other elements, such as the name GIANFRANCO FERRE.

The complainants are also the owners of numerous domain names, including <gff.biz>, <gff.com.es>, <gff.info> and <gff.it>.

The disputed domain name was registered on November 14, 2003. The Registrant Contact, Administrative Contact, Technical Contact, and Billing Contact details provide no further meaningful information about the Respondent other than an address of `Takamatsu, Japan' and an email address. Immediately prior to the filing of the Complaint, the web page retrievable at the disputed domain name included the statement "This domain is for sale -Limited offer USD250- (This price is strictly non negotiable)".

5. Parties' Contentions

A. Complainant

The Complainant states that it is a leading company in the fashion field, and that its goods are marketed and promoted in almost every country. As a result the trademarks and the acronym GFF are well known throughout the entire world. The Complainant contends that the disputed domain name can be considered identical to the trademark GFF, or at least it can be considered confusingly similar. It refers to a number of Administrative Panel decisions in support of these contentions.

The Complainant further states that there is no evidence that the Respondent has any trademarks or company activities under the GFF brand, and that the use of the Complainant's trademark in the disputed domain name makes it difficult to infer a legitimate use by the Respondent, and this conclusion is confirmed by the fact that the Respondent holds the disputed domain name with the intention to sell it.

The Complainant refers to numerous facts as evidence of both the registration and the use of the disputed domain name in bad faith, including the following: the reputation of the Complainant and the Complainant's trademarks, from which it may reasonably be assumed that the Respondent had actual knowledge of the Complainant and its registered trademarks when it registered the disputed domain name; the Respondent's holding of the domain name with the intent to sell it; the prevention of the Complainant, as the rightful owner of the trademark, from using its trademark in a corresponding domain name; the likelihood of confusion caused by the use of the disputed domain name, which severely hinders and penalises the Complainant; the intentional creation by the Respondent of a situation at odds with the legal rights and obligations of the parties; and, finally, the false names and lack of contact details provided with the registration, which suggests that the organization name (GFF Inc) is not true and has only been chosen by the Respondent with the sole purpose of increasing confusion and trying to show a legitimate interest in the registration of the disputed domain name.

For these reasons, the Complainant requests that this Administrative Panel issues a decision ordering the transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Panel is required to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.

The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent's domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Whether the Disputed Domain Name is Identical or Confusingly Similar to the Complainant's Trademarks:

The Administrative Panel accepts that the Complainant is the owner of registered Italian and United States trademarks referred to above that include the letters GFF.

The disputed domain name is not identical to the registered trademarks for two reasons. Firstly, the registered trademarks are in respect of a particular representation of the letters GFF (that is, the use of a particular script and, in respect of the current United States registration, the letters appear inside a rectangle), and by its very nature as a series of letters a domain name can only be identical to a registered word trademark, and not to a registration that depends upon any stylistic or design features. Secondly, the disputed domain name includes the suffix `group', which is not part of any registered trademark owned by the Complainant.

The most distinctive feature of the Complainant's registered trademarks is the combination of letters `GFF', and this distinctive combination of letters is incorporated in its entirety in the disputed domain name. The Panel concludes that the additional stylistic features of the registrations are not sufficiently significant to prevent the existence of a confusing similarity between the registered trademarks and the disputed domain name.

There have been many administrative panel decisions involving domain names where a suffix has been added to registered trademark, or a name closely resembling a registered trademark. These suffixes have included the name of a product associated with the trademark (for example, <guinessbeer.com>, Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 (March 22, 2001)), a service associated with the trademark (for example, <christiesauction.com>, Christie's Inc. v. Tiffany's Jewelry Auction Inc., WIPO Case No. D2001-0075 (March 6, 2001)), complementary qualities to those associated with the trademark (for example, <viagraconfidential.com>, Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (December 31, 2003)), and many examples of terms descriptive of business organization or modes of distribution (for example, <harrodsdepartmentstores.com> and <harrodsstores.com>, Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456 (June 6, 2001); <armaniboutique.com>, GA Modefine S.A. v. Mark O'Flynn, WIPO Case No. D2000-1424 (February 27, 2001)).

The disputed domain name is another example of a suffix relating to business organization, in this case the word `group'. This is a common word in international commerce and is not capable of distinguishing the disputed domain name from the registered trademark. Indeed, the addition of the word `group' suggests that the disputed domain name belongs to a group of companies operating under the acronym GFF, and so has connotations of an established and possibly international business. These connotations increase the risk of confusion with the Complainant's established, international trademarks.

Therefore for these reasons there is a confusing similarity between the Complainant's trademarks and the disputed domain name, and so the first element required by the Policy is satisfied.

B. Whether the Respondent has no Rights or Legitimate Interests in respect of the Domain Name:

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the domain name. There is no evidence whatsoever before the Administrative Panel to suggest that any of the circumstances referred to in Paragraph 4(c) exist in the present case.

In the absence of any response from the Respondent providing any evidence to support any possible basis on which the Respondent may have acquired rights or legitimate interests in respect of the domain name, the Administrative Panel therefore concludes that the Respondent has no legitimate rights or interests in respect of the domain name.

C. Whether the Respondent has Registered and Used the Disputed Domain Name in Bad Faith:

Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Administrative Panel, shall be evidence of registration and use of a domain name in bad faith.

The first of the four circumstances in Paragraph 4(b) refers to circumstances indicating that registration or acquisition of the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. The disputed domain name in this case was offered for sale by the Respondent on its website without any other additional material or information, which is probative of the fact that the Respondent registered the domain name for the purpose of sale. Further, there is no evidence that the Respondent had any other purpose in the registration and use of the disputed domain name other than its sale to a willing buyer. Finally, there is no evidence that the Respondent has any documented out-of-pocket costs in respect of the disputed domain name, and so the Panel concludes that the Respondent's advertised sale price of USD250 exceeds out-of-pocket costs directly related to the domain name.

The only element of Paragraph 4(b)(i) that the content of the website leaves in doubt is whether the Respondent's intention was to sell the domain name registration to the Complainant, or to a competitor of the Complainant, rather than just to any willing buyer. However, where a domain name is confusingly similar to a registered trademark then clearly a possible, indeed the most probable, target buyer is the trademark owner unless the seller is unaware of the trademark. In this case, the Panel can infer from the other evidence filed by the Complainant that the Respondent knew of the Complainant's trademark and reputation. GFF is in itself a meaningless combination of letters, and in the absence of any explanation as to the choice of this domain name then the most probable explanation is that the Respondent knew of the Complainant's international use and reputation under the trademark GFF, which it sought to appropriate for its own commercial advantage. This conclusion is confirmed by the addition of the word `group', with its connotations of an established and possibly international business, which is true in respect of the Complainant's business but not in respect of the Respondent.

Finally, the false names and failure to provide contact details with the registration are corroborative evidence of bad faith in this case.

For these reasons, the Administrative Panel concludes that the disputed domain name has been registered and is being used in bad faith by Respondent.

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 <gffgroup.com> be transferred to the Complainant.

David J.A. Cairns
Sole Panelist

Date: May 3, 2004