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Gianfranco Ferre’ S.p.A. v. Unasi Inc. [2005] GENDND 1459 (10 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gianfranco Ferre’ S.p.A. v. Unasi Inc.

Case No. D2005-0622

1. The Parties

The Complainant is Gianfranco Ferre’ S.p.A., an Italian company with its principle office in Milan, Italy, represented by Dr. Fabrizio Bedarida of Dr. Modiano & Associati S.p.A., Italy.

The Respondent is Unasi Inc., with its postal address at in Panama, Panama.

According to the search of Whois database of DotRegistrar, a division of iHoldings.com, Inc. which is the concerned registrar, on May 3, 2005, the registrant of the domain name <wwwgianfrancoferre.com> is Unasi Management Inc., while the search on June 8, 2005, indicates that Unaci Inc. is the registrant of the domain name.

The panel determines that there are sufficient reasons to conclude that “Unasi Management Inc.” and “Unaci, Inc.” are to be considered as the same person/entity, since these two share the same phone/fax number, and have an identical email address. Unaci and Unasi are phonetically identical and have the same postal code in Panama.

2. The Domain Name and Registrar

The disputed domain name <wwwgianfrancoferre.com> (“Domain Name”) is registered with iHoldings.com, Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2005. On June 16, 2005, the Center transmitted by email to iHoldings.com, Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the Domain Name at issue. On June 22, 2005, iHoldings.com, Inc. d/b/a DotRegistrar.com 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 June 24, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 14, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2005.

The Center appointed Yukukazu Hanamizu as the sole panelist in this matter on July 27, 2005. 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.

The Domain Name was registered on March 7, 2005, and the language of the registration agreement is English.

4. Factual Background

The Complainant is one of leading company in the field of fashion, as is proven by the fact that its goods are marketed and promoted in many countries. As a consequence, its indication “Gianfranco Ferre’” is well known as its trademark, trade name and the proper name of the designer Mr. Gianfranco Ferré are well known throughout the entire world.

As to the trademark GIANFRANCO FERRE’ in Panama the filing date back to March 18, 1997, at latest, while in the USA the filing date back to September 12, 1983, at latest. Furthermore, the Complainant is the owner of many national, international and community registered trademarks.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent registered the Domain Name without its consent and there are no rights or legitimate interests in respect of its use of the Domain Name. The Respondent clearly registered the Domain Name in order to advertise links to websites promoting and/or offering products and services of third parties and eventually similar to those provided by the Complaint. Its registration of the Domain Name is a case of typo-squatting, which takes advantage of a typing error.

Consequently, Complainant requires the transfer of the Domain Name registration.

B. Respondent

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

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove the following three elements (1) the domain name 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name in issue <wwwgianfrancoferre.com> is clearly confusingly similar to the Complainant’s trademarks and tradename GIANFRANCO FERRE’.

In determining the similarity of a trademark and a domain name, letters of a trademark and a domain name must be compared. The differences between the trademark and the Domain Name are “www” and “.com”. It is obvious that letters, “.com” is not significant when identifying the Domain Name, since it is a generic “.com” domain suffix. As for letters “www”, they are the abbreviation of the words “world wide web” in the “Internet World” and therefore, the letters “www” are not distinct for identifying the Domain Name either (See Marie Claire Album v. Geoffrey Blakely, WIPO Case No. D2002-1015).

Therefore, it is evident that the Trademark GIANFRANCO FERRE’ and the Domain Name <wwwgianfrancoferre.com> are confusingly similar. Accordingly, the first requirement is satisfied.

B. Rights or Legitimate Interests

The Complainant stated that the Respondent lacks rights or legitimate interests in the domain name <wwwgianfrancoferre.com> under the following reasons:

The Domain Name was registered on March 7, 2005.

The Respondent appears not to have registered the trademark GIANFRANCO FERRE’ and has never been known under this name;

The disputed Domain Name was used to address Internet users to a search engine website where links to third parties were displayed, and among them there was one link named “Gianfranco Ferre” that did not redirect Internet users to any official website of the Complainant but redirect to a website which appears to have no relationship with the Complainant (Annex 11); and

The Respondent is using the Domain Name <wwwgianfrancoferre.com> to redirect Internet users to the website “www.jcpennystores.com” which is also registered by Unasi Management Inc. an alias of the Respondent, and it is composed of sponsored links (Annex 9).

Under Paragraph 4(c) of the Policy, the Respondent may demonstrate that he has rights to and legitimate interests in the domain name by proving that:

(i) before any notice of the dispute to the Respondent, the Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent 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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

The Panel finds that the facts mentioned above are sufficiently supported by evidences and it concludes that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

From the amount of the Complainant’s sales turn over and annual advertisement disbursement, it is clear that the trademark GIANFRANCO FERRE’ is widely known to public.

The Complainant registered the trademarks GIANFRANCO FERRE’ in Panama on March 17, 1997, at latest. On the other hand, the date when the Respondent registered the domain name in issue was on March 7, 2005. This fact shows that the Respondent had a sufficient chance and time to confirm whether the trademark which compose the domain name in issue is registered or not.

The domain name in issue was used to address Internet users to a search engine website where links to third parties were displayed, and among them there was one link named “Gianfranco Ferre” that did not redirect Internet users to any official website of the Complainant but redirect to a website which appears to have no relationship with the Complainant. This fact shows that it is highly probable that the Respondent knew the existence of the official website of the Complaint and intentionally tried to redirect Internet users to a third parties website.

The Respondent is using the Domain Name <wwwgianfrancoferre.com> to redirect Internet users to the web site “www.jcpennystores.com” which is composed of third parties website unrelated to those of the Complainant. It appears that the Respondent’s use of the Domain Name in issue is taking advantage of a typing error by eliminating the period between the “www” and the Domain Name, that users commonly make when searching on the Internet. This use of the domain name in issue appears to be advertising links to websites promoting and/or offering products and services of third parties and similar to those provided by the Complainant. This use of the Domain Name in issue by the Respondent is unable to be considered as a bona fide use of the domain name in issue.

According to list of domain names which the Respondent registered in its name such as <guccioutlet.com>, <armanioutlet.com>, <versaceoutlet.com>, <valentinofashion.com> and <calvinkeinfashuon.com>, it is obvious that the Respondent has registered a large number of domain names including renowned company names in the fashion field and the related generic words used to describe the connected businesses such as “fashion”, “outlet” and “catalog”. This use of several domain names mentioned above indicates that the Respondent when registering these domain names was not only aware of the company names but also of their field of use.

The Respondent has been involved in at least 8 Mandatory Administrative Procedures regarding 37 domain names. All these Procedures ended with the transfer of the disputed domain names to Complainants.

The Respondent might have the chance to challenge the Complainant’s contentions, however, it failed to submit any response. Accordingly, the Respondent did not deny the Complainant’s assertions and conclusions contained in the Complaint.

In view of the above, the Panel finds that it is clear that the Respondent’s registration and use of the disputed domain name are part of a pattern of conduct. This kind of behavior leads to the fact that the registration by the Respondent constitutes a bad faith and use pursuant to Paragraph 4(b)(ii) of the Policy. The fact that the Respondent has been involved in a large number of cases under the UDRP helps to conclude that the Respondent’s use and registration of the disputed Domain Name fall within the concept of 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 <wwwgianfrancoferre.com> be transferred to the Complainant.

Yukukazu Hanamizu
Sole Panelist

Date: August 10, 2005