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Borsalino S.P.A. v. Avi Chen [2005] GENDND 1652 (5 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Borsalino S.P.A. v. Avi Chen

Case No. D2005-0641

1. The Parties

The Complainant is Borsalino S.P.A., Spinetta Marengo, Italy, represented by Pier Maurizio Lovisolo, Italy.

The Respondent is Avi Chen New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <borsalinohats.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2005. On June 21, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 21, 2005, Go Daddy Software 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant submitted hardcopies of the Complaint on July 14, 2005. 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 July 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2005.

The Center appointed William Lobelson as the sole panelist in this matter on August 22, 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.

4. Factual Background

The Complainant is the owner of the very well known trademark BORSALINO, duly registered in numerous countries and in use since 1857, in relation with hats.

the Complainant has become aware of the registration of the domain name <borsalinohats.com> by the Respondent on December 15, 2004.

The Complainant, through its attorney at law, served a cease-and-desist letter to the Respondent on March 21, 2005.

The Respondent replied on March 29, 2005, and offered the contested domain name for sale for 25000 US$.

5. Parties’ Contentions

A. Complainant

The Complainant relies upon its numerous trademark registrations worldwide to sustain that the contested domain name is confusingly similar and likely to cause confusion among the public.

The Complainant asserts that the Respondent has no right or legitimate interest in the contested domain name and that the registration thereof had not been authorized.

The Complainant sustains that the Respondent registered the contested domain with the intent to speculate over it.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The contested domain name is <borsalinohats.com>.

The Complainant owns numerous registrations worldwide for the trademark BORSALINO, used and registered in relation with men’s hats.

The trademark BORSALINO is entirely reproduced within the contested domain name, but is associated with the common generic name “hats”.

The domain name is not therefore identical to the Complainant’s trademark, but clearly appears confusingly similar thereto.

The addition of the descriptive name “hats” to “Borsalino” does not deprive the latter of its distinctiveness and individuality, but furthermore enhances the risk of association in the public’s mind between the Complainant and the contested domain name.

The trademark BORSALINO being well-known worldwide for hats, it makes no doubt that the public will be lead to believe that “www.borsalinohats.com” is an official web address of the Complainant where genuine Borsalino’ hats are exhibited and/or offered for sale.

The Panel is therefore satisfied that the contested domain name is confusingly similar to the trademark in which the Complainant holds rights.

B. Rights or Legitimate Interests

The Complainant mentions that it has not authorized the Respondent to use or register the contested domain name.

The Respondent does not deny those assertions and does not bring any element tending to show that it would have rights or interests in the domain name.

[See: Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 <croatiaairlines.com>; Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110 <belupo.com>]

The Panel notices that the domain name is not directed to any web page on which the Respondent would make a legitimate use of the name “Borsalino”.

It is therefore concluded that the Respondent does not have any right or legitimate interest in the contested domain name.

C. Registered and Used in Bad Faith

The Panel is aware of the worldwide notoriousness of the Complainant’s trademark BORSALINO and it seems unlikely that the Respondent could have ignored it when it registered the domain name.

The addition of the name “hats” to the mark “BORSALINO” in the contested domain name, whereas the notoriousness of the Complainant’s mark is precisely built around its manufacture and distribution of men’s hats clearly shows that the Respondent had in mind the Complainant’s trademark when it registered the domain name.

The Panel considers therefore that the Respondent was well aware of the Complainant’s trademark rights vested in the name BORSALINO when it registered the domain name <borsalinohats.com>.

For a finding of bad faith registration and use it is not necessary that the domain name is active. In the present case, it is not actively used in the sense that it is not directed towards a web site or a web page owned or run by the Respondent. It is simply directed towards a “parking” page of the domain name Registrar.

[See Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003 <telstra.org>]

The documents supplied by the Complainant show that the Respondent has made an attempt to sell the domain name to the Complainant in counterpart of a financial consideration which largely exceeds the basic cost of acquisition of the subject domain name, namely 25000 US$.

Speculating over a domain name, and in particular offering to transfer a domain name to the Complainant for such an excessive price, must be regarded as evidence of bad faith registration and use of the domain name in accordance with paragraph 4(b)(I) of the Policy.

[See Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000 <bridgetjones.com>]

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 <borsalinohats.com> be transferred to the Complainant.

William Lobelson
Sole Panelist

Dated: September 5, 2005